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The Zest

Someone Trademarked Your Product Name. Here's What You Can Still Do.

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If you were using the name first, someone else's trademark filing doesn't automatically take it from you. US trademark rights are built on use, not just paperwork, and the law gives an earlier user several ways to push back. Which ones are open to you depends mostly on one thing: how far along the other filing is.

So the first job isn't to panic or to fire off a letter. It's to find out exactly what was filed, when, and where it stands.

First, find out whether it's pending or registered

"They trademarked it" can mean three different things: they filed an application that's still being examined, the application was approved and published for opposition, or a registration has issued. Each stage has a different tool and a different clock.

Every federal application and registration has a public record in the USPTO's Trademark Status and Document Retrieval system, known as TSDR. It shows the current status and the documents in the file, including the application itself.

Write down four things: the filing date, the claimed first use date if there is one, the goods or services, and the status. Then gather your own proof of when you started selling under the name: dated invoices, order records, packaging, website captures, ads. Everything below turns on who used the name first, for what, and where.

The same name on unrelated goods usually isn't a conflict, so read what they actually claimed.

If the application is still pending

There are two ways to act before a registration issues.

A letter of protest. This is a way to send the USPTO evidence about someone else's pending application. The fee is $150 per application. It's best filed before the mark is published. After publication the evidence has to meet a higher standard, and a letter filed more than 30 days after publication is too late and usually won't be considered.

Here is the limit that matters for an earlier user with no registration: the USPTO says a letter of protest that claims common law prior use of the mark is not an appropriate use of the procedure and typically won't be considered. Letters of protest work for things an examining attorney can act on, such as a conflict with your existing registration or earlier-filed application, or evidence that the term is generic or merely descriptive. Prior use has to be proven in a proceeding before the Trademark Trial and Appeal Board (TTAB). A letter of protest also doesn't extend the time to oppose.

An opposition. When an application is approved, it's published in the USPTO's Official Gazette. Under 15 U.S.C. § 1063, anyone who believes they'd be damaged by the registration can file an opposition within thirty days after publication. Prior use is a recognized ground: 15 U.S.C. § 1052(d) bars registration of a mark that so resembles a mark "previously used in the United States by another and not abandoned" as to be likely to cause confusion.

The thirty days go fast, but they can be extended if you ask before they run out:

  • a first 30-day extension is granted on request, with no fee
  • a 90-day first extension, or a further 60 days after the first 30, requires good cause and costs $200 when filed electronically
  • a final 60-day extension requires the applicant's consent or extraordinary circumstances and costs $400

The total can't run past 180 days from the publication date. Filing the opposition itself costs $600 per class when filed electronically. An opposition is a small lawsuit on paper, with pleadings, discovery and evidence. I walk through how it works in the article on oppositions and letters of protest, so I won't repeat it here.

If the registration has already issued

A registration can be challenged with a petition to cancel, also filed with the TTAB, at $600 per class electronically. Under 15 U.S.C. § 1064, it can be filed by any person who believes they are or will be damaged by the registration. The grounds available depend on the registration's age.

Within five years of the registration date, a petition can generally rest on any ground that would have blocked registration in the first place. That includes your earlier use and a likelihood of confusion.

After five years, for a registration on the Principal Register, the list narrows to what the statute names. A registration can still be cancelled at any time if the mark has become generic, is functional, has been abandoned, or if the registration was obtained fraudulently, along with a few other listed grounds. "I used it first and buyers will be confused" is not on that list. For an earlier user, the fifth anniversary of the registration date is the date that matters most.

"Abandoned" has a statutory meaning. Nonuse for three consecutive years is prima facie evidence of abandonment. If the registrant isn't actually selling anything under the name, that's worth knowing whatever the registration's age.

What your earlier use is worth without a registration

Even if you never challenge the filing, your earlier use counts for something.

A registration gives its owner nationwide priority dating back to the application's filing date. But 15 U.S.C. § 1057(c) carves out anyone who used the mark before that filing date and hasn't abandoned it. And 15 U.S.C. § 1115(b)(5) preserves a defense, even against an older registration that has become incontestable, for a party who adopted the mark without knowledge of the registrant's prior use and has used it continuously since before the registrant's filing date.

The statute also sets the boundary. That defense applies only for the area in which the continuous prior use is proved. In practice, an unregistered user's rights tend to be tied to the places where the business actually had customers and a reputation, while the registrant gets the rest of the country. I go deeper on this in the article on prior user rights.

Should you file your own application?

You can, and it's often part of the plan. The base USPTO filing fee is $350 per class.

Know what will happen, though. The examining attorney searches the USPTO's records, and an earlier-filed application or an existing registration for a confusingly similar mark on related goods can block yours. If the other filing is still pending and was filed before yours, the examining attorney will tell you that yours may be refused if theirs registers. So your own application generally doesn't resolve the conflict by itself. It works together with an opposition or a cancellation, and if you win that proceeding, your application has a path forward.

It also isn't always a fight. Some of these end in a coexistence agreement, a purchase of the registration, or a narrowing of the other side's goods. What makes sense depends on the dates, the goods, how much the name is worth to you, and what a proceeding would cost compared to rebranding. If the other side has already sent you a demand, see the article on cease-and-desist letters.

The one thing that doesn't help is waiting. Every option above has a clock on it, and the clocks start with dates you don't control.

If you'd like to talk through your own timeline, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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