Challenging Another’s Trademark Registration

Posted by Michael Shimokaji | Apr 22, 2014 | 0 Comments

Question: If one has been using a name as a common law trademark, what is involved in challenging a trademark approved to someone else?

I and some friends have been using a name for a science fiction universe since 1996. The name was used for a group of fighters set in the future. We went public with it in February 2009, in which we posted chapters, art, etc., on a website and distributed flyers to publicize. We have plans to publish books and other media, such as games (we've come up with game ideas and have written about it). I found out this year that a game came out about a group of fighters set in the future with a similar art style for the characters and using the same name we use for the game. We understand that we were using the name as a common law trademark. The game company filed the trademark in October 2009 and later got approval. What is involved in challenging it?

Answer: To challenge the trademark registration of the other company based on your prior use and present confusion between the two marks, you could initiate a cancellation proceeding in the trademark office – http://www.uspto.gov/trademarks/process/appeal/tbmp_3rd_ed_rev_1_chapter_300.pdf

Another mechanism would be to file a lawsuit in federal court.

About the Author

Michael Shimokaji

Michael’s expertise includes the strategic development of patent and trademark portfolios. He identifies those patents and trademarks that are valuable to his clients by providing them with a competitive advantage. Then, Michael obtains patent and trademark registrations in the US and abroad.

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