Protecting Your Brand: Navigating Trademark Issues for Long-standing Businesses
Building a successful business requires a considerable amount of effort, dedication, and investment, especially when it comes to establishing a brand identity. If you have been using your name for ten years as a registered business and filed a trademark, but had to file extensions due to limited funds, you may find yourself facing challenges when other companies file similar names in the same class and even adopt your labeling layout. Don’t panic; there are steps you can take to protect your brand and resolve these issues.
1. Assess the Trademark Landscape: Begin by conducting a comprehensive assessment of the trademark landscape to understand the extent of the issue. Look into the two other companies that have filed similar names and evaluate if their usage could cause confusion among consumers. Hire a professional trademark attorney to help you with this process, as they can provide valuable insights and guidance.
2. Prior Use Defense: If you have been using your name for ten years, you may have a strong defense based on “prior use.” Prior use means that you were using the trademark before the other companies filed for registration. This defense could potentially help you maintain your rights to the name, even if you filed for a trademark extension due to financial constraints.
3. Evaluate Your Labeling Layout: If one of the companies has taken your labeling layout, it might constitute trade dress infringement. Trade dress refers to the overall visual appearance and design of a product or its packaging that distinguishes it from competitors. Consult with your attorney to determine if your labeling layout can be protected under trade dress laws.
4. Gather Evidence: To strengthen your case, gather as much evidence as possible to demonstrate your continuous use of the name and labeling layout. This evidence could include dated photographs of your products, invoices, advertisements, marketing materials, and any other documents that establish your prior use and the distinctiveness of your brand.
5. Reach Out to the Other Companies: Before escalating the situation to legal action, consider contacting the two companies directly. Explain your concerns and the potential infringement of your brand’s rights. Sometimes, amicable resolutions can be reached through negotiation, such as coexistence agreements or licensing arrangements.
6. File a Trademark Opposition: If communication with the other companies fails to yield a satisfactory resolution, you may consider filing a formal opposition with the trademark office. This legal process challenges the registration of the conflicting trademarks. Your attorney can guide you through the opposition process and present your case effectively.
7. Enforce Your Rights: In case your prior use defense is not enough to protect your brand, you might need to enforce your rights through litigation. Engage your attorney to represent your interests in court, seeking remedies such as injunctions, damages, or orders to cease the infringing activities.
8. Consider Rebranding: Although rebranding might be a last resort, it could become necessary to protect your business’s long-term interests. If legal action seems unfeasible or financially burdensome, rebranding might be a strategic option to consider. Your attorney can guide you through this process to minimize any potential disruption to your business.
Conclusion
Trademark issues can be complex and challenging, but don’t lose hope if you find your long-standing business facing such problems. Consult with a trademark attorney as soon as possible to protect your brand and explore the available options. Whether through the defense of prior use, oppositions, or enforcement actions, taking proactive steps will safeguard your hard-earned brand identity and help you continue to thrive in the marketplace. Remember, your brand is an invaluable asset, and protecting it is a crucial aspect of maintaining your business’s success.
Video Transcript
What should I do if I had already been using my name for ten years as a registered business and filed a trademark but had to file extensions due to funds? (So I assume that means, perhaps, limited funds.) Meanwhile, two other companies in the same class filed similar names, and one of them took my labeling layout. What do I do?
Let’s talk about some of these terms here because if a person is new to trademark law, you may not fully understand what all this means.
Federal Trademark Applications and Commerce Clause Explained
So Chazzy’s Channel is saying, “Look, I wanted to register a federal trademark.” We don’t worry about state trademarks because federal trademark law trumps state trademark law. So I assume this is a federal trademark application. Once you file a federal trademark application, or as part of the filing, you need to show that you are actually using the mark in commerce. Why is that required? Because under constitutional law, the federal government doesn’t have the authority to regulate trademark law unless it relates to interstate commerce (it is under the commerce clause). So as a legal requirement, federal statutes require that there be interstate commerce.
Why is that required? Because under constitutional law, the federal government doesn’t have the authority to regulate trademark law unless it relates to interstate commerce (it is under the commerce clause). So, as a legal requirement, federal statutes require that there be interstate commerce.
Intent to Use Classification (1B) and Its Implications
Chazzy, I see your note here; you are classified as a 1B, which for those who are not familiar with trademark law, means intent to use. So what Chazzy is saying is that rather than already using her mark in interstate commerce, she has said, “I intend to use it. So I want to reserve a placeholder essentially.” Then what happens is she has a period of time, I think it is six months, to submit evidence, or a specimen is what it is called, but evidence that she is using the mark in interstate commerce. If she is not doing that yet, she can file for an extension and then another extension. There is a limit, but the extensions cost money, and they take time.
Strategies for Fulfilling the Commerce Requirement
So first off, often my advice to business owners who are looking at doing an intent to use a trademark is, is there any way that we can just get some commerce happening right now? For example, start selling to a few people. I don’t care if it is your cousin or your uncle, or your aunt, but get some sales done, get a website out there offering it for sale if there is a way to get some transactions and some advertising in place, that fulfills the very small requirement that you have some sort of commerce.
Alternatives When Immediate Commerce Isn’t Feasible
Let’s say it is not possible. For example, it is often not possible you are going to sell a product that is patented, and you need to file a patent application, which means you also need to come up with a lot of money for the patent attorney fees to file a patent application. So you are not ready to sell it yet. Well, one option is you could start taking pre-orders. That might be a way to go. But just let’s hypothetically assume that you can’t. And so then, you file the intent to use the application.
Common Law Trademark Rights and Copyright Infringement Consideration
So back to Chazzy’s question here. After filing the intent to use the application, two other companies filed similar names. One of them took her labeling layout.
So first, what are Chazzy’s trademark rights, or what are your trademark rights if you have been using a mark already in business? You have what is called common law trademark rights. That means you have a common law trademark in the counties where you have used the mark. It is not the same as a registered mark where you have nationwide rights or a monopoly on that mark, but you do have rights in the counties where you have been using it.
Trademark Registration and Retroactivity
Now the fact that somebody else copied the labeling layout makes me wonder if they are copying what you are doing, and if they are, that may be copyright infringement. If you have filed an intent to use application and then you provide specimens showing use in commerce, if the U.S. Trademark office grants your application and so grants a trademark to you, that trademark is retroactive back to the date you have originally filed it. So you would have a first in time, first in right situation. In other words, because you were first, you have first rights to use it.
Conclusion
So, in conclusion, if you find that once you start, or if you have been using a mark, and then you apply for a trademark registration, the best option is to show that use and do a trademark application showing that you are currently using the mark. But if you must use an intent to use the mark, then ultimately, you want to get that finalized as soon as possible because then it goes retroactive back to the date of filing if your trademark registration is granted.
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I am Aaron Hall, an attorney for business owners and entrepreneurs. If you would like to get more videos like this, feel free to follow this channel by subscribing. And I encourage everybody to subscribe at aaronhall.com/free. That is where you can get some exclusive videos, helping business owners avoid common and expensive legal problems and help grow your company so you achieve success in your company and, hopefully, as well in your life. Thanks for joining me here today.
