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    6 Replies Latest reply on Mar 23, 2011 5:52 AM by edphzo

    Common Law Trademark Help

    edphzo Newbie

      Newbie here requesting guidance on common law trademark protection. Case is as follows:


      Co.A has been using Product X as a product name since 2001 for a software solution, selling online nationwide, as well as countries in Europe and Asia. Unfortunately, the thought of registering a trademark for Product X name never crossed the mind of Co.A, especially since they have not met with such matters prior to this. Co.A is registered in NV, if that helps.


      Co.B registers a trademark for Product X on Jan 2011, and proceeds to send a cease and desist letter to Co.A regarding the use of the name. Co.B is using the name for an identical product. Co.B has also stolen the use of Co.A's motto and slogan for Product X.


      Apologise for the use of the generic names, as this question is being asked on behalf of a friend (namely, Co.A's owner). The owner has been tearing his hair out trying to figure a way around this situation, and the lawyer suggests that Co.A may have a tough fight.


      To help him, I have been researching a little on this, thus stumbling over this forum. Part of my research shows that we may be able to make a stand using Common Law Trademark terms. Regrettably, my knowledge on such matters is negligible, and I would like to learn more about this approach, if possible.






        • Common Law Trademark Help
          LUCKIEST Guide

          Welcome, When it comes to Trademark Law, Get a GOOD lawyer who specializes in trademarks.

          Good luck

          • Common Law Trademark Help
            LUCKIEST Guide

            P S, SCORE on line might have lawyers who can help.

            You can pick and chooses the one or more than one who could help you.

            And remember SCORE is FREE and Confidential.

            • Common Law Trademark Help
              Paul Reidl Newbie

              Ed, I can't give legal advice on a public forum but in cases involving a registered trademark in the United States the registrant's rights do not extend to common law uses that were being made at the time the trademark application was filed and that were continuous.  The prior continuous user gets the rights to the geographic area of use; the registrant gets the rest of the country.  Based on what you have posted, your friend may be in the driver's seat and could have a counterclaim against the registrant for infringement.  I have a case right now in Federal Court in Sacramento where the Defendant is asserting this defense (and he is not going to win it!)  Sometimes a strong response to the demand letter can prompt the sender to realize that he has stepped in it and that he should back down.



                • Common Law Trademark Help
                  KathleenF Scout

                  Using persuasive tone and refrain from "you-attitude" is highly recommended too.  Edit, edit, edit!


                  Make sure you get your point across without becoming defensive and unprofessional.


                  Also, contact an attorney to review the letter before it is sent.


                    • Common Law Trademark Help
                      edphzo Newbie

                      Many thanks, Paul and Kathleen, for the information provided.


                      Not sure how the geographical aspect will play out for him, as he has been selling his product nationwide for all these years.


                      Nonetheless, I can only pray for him now. Well, besides digging for more information, I suppose.