First of all I know you’re not my lawyer, and I won’t hold you to anything you say. Here’s the situation…
I’m a small company with a registered trademark. Let’s say my trademark is “Paper is Pink”. Shortly after I applied for my trademark, big corporate conglomerate “ABC Mega Corp” applied for the trademark, “ABC Paper is Pink”. They basically used my mark, and added their company name to the front.
We applied for our respective trademarks within days of each other (and I applied first, and had an earlier “use in commerce date”), but because of the proximity of the application dates, I don’t think they were aware of my application when they submitted their application.
They filed for an extension to oppose my trademark, but they never did oppose (because I don’t think they had any grounds) and I now have a registered trademark.
The service my business sells is complimentary to the product ABC Corp sells. Kind of like the relationship between paper and printers, or film and cameras. Their product is a consumable that people would use in the process of using my service. Because of that, even though I am much smaller than them, people might think I am a subsidiary of ABC Corp or that their product is recommended for use with my service (think HP Paper and HP printers)
Anyway, I’ve formally opposed their trademark application through the Trademark Trial and Appeal Board. ABC Company’s attorney contacted me and wanted to hear what my concerns were to see if we could resolve this.
The attorney basically listened to my concerns, and will send an email to the ABC corporate contacts summarizing them and will get me a response within a couple of weeks.
So far I’ve been doing this on my own. I applied for the trademark on my own, and filed the opposition after studying many other opposition documents at the Trademark Trial and Appeal Board. At one point I consulted a trademark attorney, but I ended up paying a lot of money for them to tell me stuff I already knew.
Even though ABC Company doesn’t have their trademark yet, they are heavily promoting it. They are using it in press releases, have changed the names of their products, and in Europe anyway have sponsored events using the name.
I’ve got two questions:
Even though I am going through this opposition process is it also worthwhile to send a Cease & Desist letter? Will it help me negotiate a better settlement or strengthen my case? From a practical standpoint, I think ABC Company will ignore it since they already have a lot tied up in the name, and I am a small company.
When the attorney spoke to me, it was a week before their reply to the opposition was due at the TTAB. They asked if I minded if they requested that all the deadlines be extended by six months. Thinking that this process would take some time (and hoping that we can come to some amicable resolution) I consented. Does it weaken my case at all that I consented to this (since I am alleging that my trademark is being infringed upon and being damaged by them using their mark)?
If you wanted the specific trademarks in question, or links to the opposition documents, I could PM them.
Thanks in advance.