The competitor and my client shared a similar story (as in A Tale of Two Trademarks) – both had started using their trademarks about a year ago. The only difference was that my client waited until now to consider obtaining the protection afforded by a registered trademark. By comparison, the competitor realized the need to obtain a registered trademark months ago and, months ago, filed to obtain a registered trademark.
Now the competitor was in the last stages of the process of getting his registered trademark. The application had been received and reviewed by an examining attorney at the USPTO who saw no reason to reject it. He submitted the trademark for publication in the Trademark Gazette. Once a trademark is published in the Trademark Gazette, other parties have only 30 days to oppose the registration. And that opposition process takes time and money – much more time and money that simply filing for a new registered trademark. Thus, within a few months (30 days in the Trademark Gazette followed by a few months of paper shuffling by the USPTO), the competitor would have his federally registered trademark.
To reiterate -- once an application for a registered trademark makes it to the Trademark Gazette, the mark will soon be registered unless an opposing party has deep pockets and a very good argument. Thus, placement in the Trademark Gazette is a key milestone in the life of a registered trademark. In fact, being published in the Trademark Gazette is to a trademark what getting your wedding announcement in the New York Times is to a Manhattan bride – essential.
But back to my Tale of Two Trademarks. I went back to my client and informed her of the problem. She had been beaten to the punch. If she didn't oppose the competitor's trademark, she would have little chance of registering her own, similar trademark. If she did nothing and simply resumed doing business using her trademark, there would be considerable risk that someday, whether six weeks or six years from now, she would receive a Cease & Desist letter from her competitor threatening litigation if she refused to stop using her trademark. That would likely lead to my client being forced to stop using the trademark she had been using for so long. So this was a classic case of two businesspeople both having the same great idea (similar trademarks) at the same time. Unfortunately, the competitor realized the value of that idea sooner, took action more quickly and, in doing so, earned for himself the registered trademark. It pays be the early bird.
The moral of this story is simple – if you have a clever, catchy trademark, contact Greg DePaul, Esq. at (973) 376-8585 and discuss registering that trademark now, before your competitor does. When two people come up with similar trademarks, the first to file often wins the race for a registered trademark and the latecomer usually loses. You don't want to wake up one morning and see a trademark similar to yours on the cover of the Trademark Gazette.
So consider this Tale of Two Trademarks; otherwise you may find yourself being forced to stop using the clever, catchy trademark and throwing all those business cards, promotional materials and storefront signs – and probably the Trademark Gazette as well -- in the trash along with all the good will you earned with that trademark.
So Make Your Mark – ASAP! If your trademark is catchy and clever ... call Greg DePaul, Esq. at (973) 376-8585 to discuss obtaining a registered trademark. Otherwise you may find yourself the loser in a Tale of Two Trademarks.