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Old 08-15-2019, 03:26 PM
Acsenray is offline
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Join Date: Apr 2002
Location: U.S.A.
Posts: 36,245
Originally Posted by Chronos View Post
A thought occurs to me: One sometimes hears of an overzealous corporate lawyer sending a cease-and-desist letter to someone who's been using the same name or other trademark since before the lawyer's company even existed. Usually, the recipient of the letter points out their priority, and it ends there. But couldn't such cases lead to an open-and-shut countersuit? The recent company, after all, is arguing that the two are sufficiently similar to cause confusion, and in a sufficiently-similar context. But if the smaller trademark holder is actually the older one, that would then mean that the big, newer trademark holder is actually in infringement.
This can happen. It often leads to a condition called "reverse confusion."

Of course "open-and-shut" is rare. How much smaller is the prior user? There are cases in which the prior user is so small that its trademark rights are limited to a small geographic region, and the later, larger user basically gets the rights in the rest of the country.
*I'm experimenting with E, em, and es and emself as pronouns that do not indicate any specific gender nor exclude any specific gender.