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Law Educator, Esq.
Law Educator, Esq., Lawyer
Category: Intellectual Property Law
Satisfied Customers: 110390
Experience:  Attorney practicing all aspects of copyright/trademark law
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We have a phrase or "slogan" as a registered trademark in the

Customer Question

we have a phrase or "slogan" as a registered trademark in the US. We use this "slogan" as the ethos for our company as sell it on shirts, sweatshirts and leggings, mostly workout and casual gear. It has come to our attn. that a very prominent designer has also been using that same slogan on her represented apparel and has been selling it through Macy's, Nordstrom and others. It appears as though this designer had been selling this prior to the registered trademark being delivered to us. What course of action(s)if any would you recommend looking at? Thank you
Submitted: 6 months ago.
Category: Intellectual Property Law
Expert:  Law Educator, Esq. replied 6 months ago.
Thank you for your question. I look forward to working with you to provide you the information you are seeking for educational purposes only.
If you registered the trademark, you have the legal presumption of ownership of the mark under the Landham Act (trademark law). AS such, you have a legal right to send a cease and desist notice to the other company informing them you own the registered mark. At that point, the company has to either settle with you and pay you for the mark or take you to court and seek to have your trademark invalidated. In general, most companies will negotiate to buy you out of the mark, even though legally they could win a case proving first in use in commerce (you said she has been using it before you registered the mark so she could get the mark invalidated with that proof) and could get AT LEAST limited common law rights (meaning they could get rights to use it along with you based on their first use in commerce).
So I would send them a cease and desist letter and inform them you are the owner of the registered trademark. Ask them to contact you to discuss resolving the matter. In the meantime come up with a reasonable value of your mark, because you would likely do much better in negotiating a buyout than having to go to court to fight over the mark or negotiating some payment from them and a deal that allows you to continue using your mark for your company and lets them use the mark too.

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