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Waiting to Apply for Registration Can Cause Avoidable Problems

I’ve had a few clients recently who regretted waiting to apply to register their trademarks.

This isn’t about scaring anyone. Waiting a while often doesn’t have a downside. Indeed, deciding not to register a trademark at all might be the right thing to do.

But sometimes waiting gives someone else the chance to file an application for federal registration first. That means they get in line ahead of you. If the PTO grants their application — and their mark is confusingly similar with yours — their registration would block yours. It would not matter that you started using your mark first and have superior trademark rights. And when their registration issues, you could be locked into the geographic area in which you made sales before they applied for their registration.

Depending on the situation, that may not be the end of the world. But for some trademark owners, that would be unacceptable. If so, they would need to clear out the blocking application or registration. Unfortunately, that process can be time-consuming and expensive. If the PTO’s 30-day opposition period hasn’t passed, they can start an opposition proceeding. If it’s too late for that, or if the registration has already issued, they can start a cancellation proceeding. A party can win either of those proceedings if it can show it used its mark first and the applicant’s or registrant’s mark is likely to cause confusion with its mark.

In such cases, winning is not the problem. The problem is those proceedings can take a long time and can cost a lot of money — a problem that would not have existed if the party with superior trademark rights had simply filed its application for registration first.

Posted on February 9, 2014 by Registered CommenterMichael Atkins in | CommentsPost a Comment

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