Context

Three years ago, my small team and I created a product that we've been selling ever since. To clarify that I meant to use the name as a trademark, I added the trademark symbol (™) after the product name anywhere we used it.

The product is in French only (for now), but sold worldwide (it teaches English.) Even though we're small, the name is fairly specific and we're the #1 result on Google for the name, in various languages.

I didn't bother with registering a trademark earlier, because creating and supporting a product is enough work as it is and, at the time, it was a lot of money that we needed to use elsewhere.

Issue

Today, I found out someone is trying to register our name as a trademark in the U.S. It's unclear to me whether that person is acting in good faith (or acting as a trademark troll.)

At the least, they were too lazy to check whether the name was in use or, if they did, just didn't care that we did use it.

The registrant is not using the name anywhere online. The Intent to Use in their application is Section 1(b): "The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services". They're filing for standard characters, in the same identification category that could describe our product.

Questions

The USPTO has a description of the trademark registration process and nice flow chart timelines. They also have a page on how to oppose trademark registration.

…but this did not answer all of my questions.

  • The docs say I have 30 days to oppose after the date of the publication in the Official Gazette (OG). Given it takes roughly three month between filing and publication, this would mean another two months to wait:
    • Can I oppose before publication in the OG?
    • Is there anything I can do before that?
    • Should I try to file for registration in the U.S. simultaneously? Their "filing basis" is Section 1(b) (intent) while I can file for Section 1(a) (current use).
  • Once we oppose, do we have good chance of winning? How can I improve our odds?
  • If my opposition is rejected and their trademark registration is successful, has the registrant any chance to enforce the trademark in court against us?

Can I oppose before publication in the OG?

According to a law firm blog, "Trademark oppositions can only be filed during the opposition period and not before."

If you're looking for something to do in that time, hiring an attorney may be an option, since you don't have a ton of time after it's published.

You'll have to wait until publication but you can submit a letter of protest to the USPTO if you already have a registered mark to notify the examining attorney of the issue. This will help them make a decision during their examination whether or not to refuse the application on likelihood of confusion basis. Conversely, you can send them a cease and desist letter demanding they withdraw the application or if the mark registers, file a petition to cancel on grounds of seniority, misleading the uspto and more. You have a few options at your disposal to combat trademark trolls.

Here is a link with more info on letters of protest: https://www.uspto.gov/trademark/trademark-updates-and-announcements/letter-protest-practice-tip

sorry I didn't catch this question sooner. We've seen a disgusting pattern lately where chinese companies are taking ligitimate trademarked names from other countries, and submitting trademarks with the US. They do this to prevent you from selling your own product in the US. They'll then obtain copies of your work, reproduce them, and then sell them in the US under your name. Case and point, look up the RC brand HSP.

I would HIGHLY recommend you get an attourney and fight this trademark proving you have been operating under that name under the US market. I would then apply for that trademark within the US to solidify your trademark under the US market.

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