Someone Is Using Your TradeMark...What You Need to Know

So, you have a federal trademark registration, and you want to stop someone else from using it. That's why you sought out the registration, right? Not so fast. Here are a few things to know.

1. Subsequent Users Still Have Rights

If you successfully obtain a trademark from the U.S. Patent and Trademark Office, you do have the right to stop some others from uses that are confusingly similar. However, those that start using the trademark after you began using, but before you obtained your trademark registration, still have rights that may prevent you from stopping their use. If a party starts using the mark in good faith, and without knowledge of the trademark owner's use, the subsequent user can retain common law trademark rights. The subsequent user rights will be limited to the territory in which they were using the trademark before the trademark owner filed their trademark application, in most cases.

2. Prior Users Still Have Nationwide Rights - Within 5 Years

Your trademark rights are established by use, not registration. So, those that were using the trademark in a particular territory can't be forced to stop using the trademark just because you obtained a federal registration. The prior user will not be restricted to a specific geographic region, as the prior user has national priority over the trademark owner.

Even more, the unregistered prior user can oppose a trademark owner's application and can and should consider opposing or seeking cancelation of the trademark registration. There is no need for the prior user to secure a trademark before requesting cancelation or opposition of the trademark registration. The ability to oppose is limited to the 30-day opposition period after the mark is allowed. A prior user may seek cancelation within five years of the date of registration based on prior use.

3. Prior Users Still Have Limited Rights - After 5 Years

After the fifth year of registration, a trademark owner can seek "incontestable" status by filing an affidavit, which increases the evidentiary value of the registration and limits the grounds available to those who seek to cancel the trademark registration. While an incontestable mark does have superior rights, it can't be used to prevent a prior user from continuing to use the trademark in the geographic location in which they have continued to use the trademark, without interruption. That prior user could block the use of that trademark by the trademark owner in those territories.

Your Takeaway...

A subsequent user cannot challenge a prior user's trademark use via an opposition or cancelation proceeding. So, don't file an opposition or cancelation if you know that the trademark was already in use (one that is confusingly similar to an ordinary consumer in the "marketplace") before you began using the mark. A subsequent user can sue the trademark owner for trademark rights (not recommended). The subsequent user may also file a trademark application requesting limited territorial rights. This is called a concurrent registration.

A concurrent use proceeding requires the applicant to say where and for how long they have used the mark, as well as how the geographic and temporal scope of other's use of the trademark. If the mark is otherwise registerable, it will issue. As with all other trademarks, it will be published for opposition in the Official Gazette for 30 days. If unopposed, notices are sent to the parties concurrently using the mark, who have 40 days to respond.

If there is no objection, a federal registration will issue to the applicant that is limited to a particular type of good or services, in a specific territory. The prior users will be entitled to protection in all areas in which the junior user is unable to establish priority unless the parties agree otherwise (concurrent use agreement).

Being a trademark owner has benefits, but as with everything, there are limits and trademark owners should be aware of these limits.