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Sam
Sam, Attorney at Law
Category: Intellectual Property Law
Satisfied Customers: 27009
Experience:  More than 20 years of experience practicing law.
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I have been doing business since 2010 with the name Dr. Sofskin's

Customer Question

I have been doing business since 2010 with the name Dr. Sofskin's
I received a cease and desist email today from a company in India with the TM Sofskin, registered in India and the US.
http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4801:amaqe0.4.1 is the registration.
Am I screwed, or ok?
Submitted: 8 months ago.
Category: Intellectual Property Law
Customer: replied 8 months ago.
http://www.viny.us/products.htmwww.drsofskins.com
Expert:  Sam replied 8 months ago.
HelloThis is Samuel and I will discuss this and provide you information in this regard. Generally, in matters of this nature regarding TM's a cease and desist is a first step as a warning. If you continue to use the name, then you could be sued. I suggest at this juncture if you stop, cease and desist the use of the name, there should not be anymore problems. Of course, if you also have a TM on your name, you can consult with a local attorney who can research to see who had the TM first and make an argument that it is your TM and they need to cease and desist.
Customer: replied 8 months ago.
My first use in commerce is after their listed one, but before their TM was granted. It is different as well, "DR. Sofskin'S"
I feel they are different and not confusing.
I use TM on everything, and have from day 1, although it is not registered with USPTO
Expert:  Sam replied 8 months ago.
Thanks. I understand. I suggest a registered TM is going to win this battle. While mere use of the word or logo without registration is enough to create common law trademark ownership rights, those rights only extend to the geographical area where the mark is being used. A Federal Trademark registration is much stronger protection because it provides national protection.

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