I created a software application in the transportation space in 2016, and I applied for a trademark for a variant of the name (same sound, extra letter at the end) with an Intent to Use application in May 2018.

Another transportation startup applied for a trademark the same name in June 2018, with a use of commerce date in April 2018. Their mark was published for oppostion on May 14, 2019. This startup is well funded (100M+) and is based in SF, I’m in LA.

What should I do?

A. Apply for a trademark today for the original name with a use of commerce date of 2016. B. File a Letter of Protest with the USPTO C. Contact the lawyer from the application and try to work something out D. File a request for a declaratory judgement too clear the air E. ???

Any advice would be appreciated!

I’m willing to spend only 5-10k to take this to court, so I’d rather settle outside or come to a licensing agreement.


Did you actually start selling the app, identified by the desired mark, or advertising it for sale in 2016? If not, you cannot claim use in commerce from that date.

I would suggest that you try a few IP lawyers who offer free or low-priced initial consultations, and put this same problem to them, with more details. Such a lawyer could advise on the costs and possible results of any of your options. With cost a major factor, I would suspect that B (protest letter) followed immediately by C (attempt to negotiate a settlement) would be a plausible choice. You might also want to consider a different name.

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.