Is there a way to protest or challenge a registered trademark? (not a UDRP question)

[cshel]

Someone has registered my company name as a trademark. The first use date they claim is 2000... I've been using the name since 1995. I'm not sure how it is that this guy's attorney didn't notice someone else was already using the name, but it's happened.

Is there some type of challenge that can be filed?

Thanks in advance for your comments,
Carolyn

 

[GeorgeK]

It can be challenged. But, if they're using the term in a different industry than you are, then you have no real basis for the challenge.

 

[cshel]

It can be challenged. But, if they're using the term in a different industry than you are, then you have no real basis for the challenge.

It's the exact same industry, exact same service. Different geographical location, but they've asked for and received a national trademark.

 

[Anthony Ng]

I guess our lawyer members might have a better idea as to how a REGISTERED trademark in the U.S. could be challenged. (I'm sure there is a way. ) Large companies usually monitor advertised trademark applications (via their trademark agents) and file opposition even before they are allowed.

 

[cshel]

I guess our lawyer members might have a better idea as to how a REGISTERED trademark in the U.S. could be challenged. (I'm sure there is a way. ) Large companies usually monitor advertised trademark applications (via their trademark agents) and file opposition even before they are allowed.

I found some resources for filing a challenge or a request for a cancellation at uspto.gov.... I think I found what I was looking for.

 

[Domagon]

Someone has registered my company name as a trademark. The first use date they claim is 2000... I've been using the name since 1995. I'm not sure how it is that this guy's attorney didn't notice someone else was already using the name, but it's happened...

A company name in and of itself is not necessarily something one can automatically hold a trademark for.

Are you using your company name prominently in the marketing of products, etc? Or only on invoices, business forms, and the like?

Each state has its own registry of corporate names - it's common to find conflicting names between states...that's why a company on legal documents is often identified with both corporate name *and* state of incorporation.

Trademark searches, even by an experienced attorneys, can miss a lot. There are no guarantees - and as another person wrote already, it's common for multiple entities to hold trademarks for the same mark.

Before challenging, in my layman's opinion, consult an experienced trademark attorney...challenging their mark could open up a can of worms you'd not counted on.

Ron

 

[jberryhill]

"Different geographical location, but they've asked for and received a national trademark."

A couple of quick general points that might or might not be of use to you... Please understand that "general" principles might or might not apply to your particular circumstances...

In general, a prior user may continue use (on the assumption they were using the company name as a mark) consistent with the geographical extent in which they were using it prior to someone else's federal registration. Depending on the circumstances, a prior user might even qualify for a concurrent registration - which is a useful construct for defining respective territories of exclusive use and avoiding wasteful legal disputes all over the map.

Filing a petition for cancellation is the first step of a cancellation proceeding - which is an inter partes administrative trial held before the Trademark Trial and Appeal Board. It is similar to filing a complaint to start a lawsuit. There is a lot more that comes after filing the petition.

 

[Domagon]

LAFAYETTE ONLINE

http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78014019

In my layman's view it looks like a weak mark - note it's on the Supplemental register.

Research their service, website, etc - if it's localized in scope, which is most likely, then the suggestions made above by others are likely worthwhile pursuing.

Ron

 

[cshel]

LAFAYETTE ONLINE

http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78014019

In my layman's view it looks like a weak mark - note it's on the Supplemental register.

Research their service, website, etc - if it's localized in scope, which is most likely, then the suggestions made above by others are likely worthwhile pursuing.

Ron

They weren't even using the domain when they got the mark registered. It hasn't been used in *years*. Unfortunately, it's registered until 2011 and I have been completely unsuccessful tracking down the owner to see if he'll sell it to me. I would give my eye teeth to get ahold of the domain.

 

[Domagon]

The Contact info for the domain appears to be that of their webhosting company. Have you called them?...most hosting places won't give out details of their customers, but occasionally one gets lucky and can garner some useful info.

Old copies of the site on Archive.org weren't much help - no address, no phone number, no email, etc.

However, based on what I've seen there along with the history of their trademark registration (lots of problems), my hunch is there's a very good chance the "Attorney of Record" who filed the registration is also the domain name holder - may be a direction worth pursuing in finding the registrant.

My suggestion is to tread softly and don't mention anything about trademarks, etc given your mark isn't strong either at this point ... instead focus on buying the domain - it's obvious the registrant of the domain could never make it work and basically abandoned it, so it's very likely they'd be agreeable to sale for some quick cash.

Lastly, domain name recovery/acquisition is as much an art, as a science so definitely ask around for opinions on approaches that may work.

Ron

 

[cshel]

The Contact info for the domain appears to be that of their webhosting company. Have you called them?...most hosting places won't give out details of their customers, but occasionally one gets lucky and can garner some useful info.

However, based on what I've seen there along with the history of their trademark registration (lots of problems), my hunch is there's a very good chance the "Attorney of Record" who filed the registration is also the domain name holder - may be a direction worth pursuing in finding the registrant.

The info is for the hosting company that has since been sold to a phone company. The two contacts no longer work for the company, and the phone company has no information or any clue about anything regarding that domain. The attorney is actually not the guy who is the registrant... I have a phone number of the registrant's home that I could call... but I've been trying email avenues first since I'm not so good with cold calls. The guy who is the registrant also has an assload of other <locale>online.com names for that region... and apparently owns some sort of telecom brokerage business or something that is registered in both Louisiana and Kentucky (I found some legal records of the business)... so I half suspect he's sitting on the domains til he has something to actually do with them.

I dunno... I guess I should just bite the bullet and make the phone call.

Thanks for all the great advice though!

 

[jberryhill]

"note it's on the Supplemental register."

Oh good golly... Thanks Ron.... Dnforum Pet Peeve #32 - NOT EVERYTHING YOU FIND IN THE USPTO DATABASE IS A REGISTERED TRADEMARK ON THE PRINCIPAL REGISTER.

The "Supplemental Register" is a sort of trademark purgatory for applications which were deemed non-registrable due to descriptiveness. Descriptive marks might - *might* - someday be promoted to the Principal Register, after five years of exclusive use of the mark and submission of evidence that the mark, even though descriptive, has acquired distinctiveness as a trademark among the relevant consumers by virtue of the continuous exclusive use. Things on the Supplemental Register DO NOT carry the legal presumptions that marks on the Principal Register do.

If, as one might gather from the scattered comments thus far, they are not using the mark (which might include offline use apart from the domain names), then they are not going to show continuous use, much less exclusive use, for the purpose of advancing to the Principal Register, among other things.

If the contact information is bad, then you might try the whois complaint / snapback strategy.

Or you might just contact the registered corporate agent for the domain registrant:

http://www.sec.state.la.us/cgibin?rqstyp=crpdtl&rqsdta=34471433D