Posted by Michael Shimokaji | Apr 09, 2017 | 0 Comments

QUESTION: How do I proceed with initiating and preparing for next steps in trademark enforcement? My professional services company was first to register the trademark (filed Oct 2015, published April 2016), and first in commercial use by several years (2012). I was not aware of the existence of the offending name upon filing, but apparently it did exist; the offending name is the registered business name (but not registered trademark) of an LLC in Connecticut in the same field. The offending party is likely to resist a cease and desist, as they have been incorporated since 2014 and apparently using the name in their website and on professional forums since 2015. Thanks for your consideration.

ANSWER: You should determine whether you or the other company has priority over the other. Even if the other company does not have a registered trademark, it may have trademark rights and those rights may have priority over yours. And even if the other company is in the same field as yours, there may be a geographical difference between your business and the other business that would allow both of you to use the same trademark.

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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