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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.

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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.

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