All Questions in Trademark Ownership >> Infringers of common law trademark

Infringers of common law trademark

Posted by . updated on 11/11/2009
Here's my dilemma ... I have been using my mark in business since roughly 1998.  Up until late last year, this was just a part-time business, but now I have gone into it full-time.  I set myself up as an LLC and began the process of applying for national trademark registration for my mark.  I searched TESS and found nothing that conflicted (from all the options I could think of), so the process has begun.  After doing so, I found another person is using an almost identical name for the same type of business, though it appears they have only been doing it for the past two years.  The business I am in is internet-based and because of that, I have had clients across the US (as has this other person, I would think), so we are in competition for the same business even though we are in different states.

I have spoken to an IP attorney, and he has said I should send a C&D to this other person since I should have common law rights to the mark as I have been using it for almost 10 years now.  The problem has been tracking them down, as they give no address nor way to contact them via their website, and the WHOIS record for them is worthless as it's filled in with bogus information.  By doing some more sleuthing, I found another site they did (that had almost identical verbiage to the infringing site without using the same mark as me) and from there I was able to track down the owner (I think).  It appears this person is working as a paralegal at a law firm and is going for their law degree, so I'm afraid if I send them a C&D they may fight it since it won't cost them anything to do so (whereas it will cost ME to pursue anything).  

What I'm wondering is ... should I go ahead and send the C&D (since my lawyer tells me if I don't try to stop them from using my mark, then I am diluting my rights to it), or should I wait to see if my mark even registers first? I know that would be a delay of a year or so, but I don't know if I want to get into a legal dispute now with someone with possible unlimited FREE legal advice when I could wait and have the backing of a registered trademark (hopefully) a year from now.

My big concern is the fact they have been infringing on my mark for 2 years at this point (though I wasn't aware of it), so I don't know how that affects things either.

Can anyone guide me in which way to proceed?
Answers (2)
 
JSonnabend
Your attorney's advice is sound, in my opinion.

- Jeff
 
 
Samantha S.
Thank you very much Jeff for your swift response.  I suppose my only concern now is the fact that two years have gone by since the other person has been using the mark and I'm hoping that doesn't cause me a big problem.
 

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