How to prove that mark is not being used?

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How to prove that mark is not being used?

Posted by . updated on 11/11/2009

I apologize if this topic has been covered! I tried to register my trademark in 2005 ( I had used the name in commerce a year before attempting to register). I was notified that another company had a similar name in the same industry (likelihood of confusion) and my application was rejected. The owner of the other trademark had hers registered June 2006. She contacted me and offered to sell me the trademark because she was "tired" of this business and may be selling it - I stated I would not buy it because I had used the name before her. She proceeded to send me a cease and desist (demanding my domain). I didn't back down and she went away (refused to respond to anymore emails). My lawyer sent a notice that I could invoke my rights because I had used the name before her according to the dates posted on both applications (date of first use in commerce). I noticed that in Jan. 2008 she sold her domain and has ceased all business using the name. She is still registered on the Supplemental as the owner. I do not want this trademark to mature to the principal register. So, what are my options to go about obtaining the trademark? Thanks in advance.

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Question: I apologize if this topic has been covered! I tried to register my trademark in 2005 ( I had used the name in commerce a year before attempting to register). I was notified that another company had a similar name in the same industry (likelihood of confusion) and my application was rejected. The owner of the other trademark had hers registered June 2006. She contacted me and offered to sell me the trademark because she was "tired" of this business and may be selling it - I stated I would not buy it because I had used the name before her. She proceeded to send me a cease and desist (demanding my domain). I didn't back down and she went away (refused to respond to anymore emails). My lawyer sent a notice that I could invoke my rights because I had used the name before her according to the dates posted on both applications (date of first use in commerce). I noticed that in Jan. 2008 she sold her domain and has ceased all business using the name. She is still registered on the Supplemental as the owner. I do not want this trademark to mature to the principal register. So, what are my options to go about obtaining the trademark? Thanks in advance.

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prove mark used


JSonnabend	Ricky, why aren't you talking to your lawyer about this? Do you trust strangers here more than your own attorney? When you speak with him, you might want to discuss cancellation proceedings. - Jeff