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Delta-Lawyer
Delta-Lawyer, Attorney
Category: Legal
Satisfied Customers: 3546
Experience:  10 years practicing IP law and general litigation
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I have had my real estate company registered in my state

Customer Question

I have had my real estate company registered in my state since 2001. Another company in another state used my same name and also has the website doamin name b/c my ex brother-in-law had that held for me and I suppose sold it to them. Is there anything I can do? They formed their business in 2008 I believe. My business is Reliant Realty and theirs is also Reliant Realty w/ERA also included sometimes.
Submitted: 1 year ago.
Category: Legal
Expert:  Delta-Lawyer replied 1 year ago.
I hope this message finds you well, present circumstances excluded. I am a licensed attorney with over a dozen years of experience handling matters of this nature. I am also a licensed intellectual property attorney. It is a pleasure to assist you today. You have a common law trademark just by using your business name in commerce. I assume that you have not filed for trademark protection on your business name with the US Trademark Office. If that is the case, as you sit here today, it will be hard to prevent this other company from acting in the manner in which they are acting. Your common law trademark is technically only enforceable in your own state. With that being said, since you can show you have used this name in commerce for so long, you should look at trademarking the name with the US Trademark Office. Once the name is ***** ***** can then send a cease and desist to this company to attempt to prevent them from using the name or force them to change. Even then, the business decision will have to be made as to whether or not it is financially prudent to file a law suit with the company. Typically, in making this decision, you need to perform a cost to benefit analysis (are they costing me more than it would cost me to sue them over this name). For reference, TM litigation can cost between $100K and $1M to maintain and you may only end up with an injunction to show for it at the end of the day. That said, on occasion having the TM in hand and sending a stern cease and desist can cause folks to back down or change their name. Let me know if you have any other questions or comments. Please also rate my answer positively (THREE OR MORE STARS). Best wishes going forward!
Expert:  Delta-Lawyer replied 1 year ago.
Did you have any other questions or concerns? Thanks
Customer: replied 1 year ago.
sorry, busy day... It seems that I should register it w/the trademark office anyway. What if they have? Would that mean that they could ask me to change my business name??? They even have the same colors as me.
Expert:  Delta-Lawyer replied 1 year ago.
If they have registered before you, they could technically file an infringement claim against you. However, this would be dangerous for them in that they have clearly copied your name and logo. For that reason, you could even petition the Trademark Office to invalidate their mark (if they have one). Since you are the first to use this name and these colors in association with the name in the market place, you have more solid rights before the US Trademark Office. The government wants to reward those that have been using the mark in commerce the longest with the rights to that mark. Let me know if you have any other questions and please rate my answer positively. Thanks
Customer: replied 1 year ago.
What steps do I take? Where do I fill out form? Is there a way for me to find out whether or not they have registered ? I dont want to go through the whole process of paying, registering etc when they have done it.
Customer: replied 1 year ago.
I will rate you when i am finished
Expert:  Delta-Lawyer replied 1 year ago.
You can go to the US Trademark Office website and search for existing registered marks. It is a keyword search and should let you know immediately if they have registered or attempted to register the mark. You can actually file your application on the same site through their TEAS filing system. It is pretty simple to do. You need a jpeg image of your logo and you will need a credit card to pay the filing fee (which is less than $300). When you file, the application will be reviewed and if there are any issues, the Trademark Office will point them out and allow you to argue and/or correct the issues. It is user friendly and not necessary to hire an attorney to perform for you.
Customer: replied 1 year ago.
I just looked online and that company filed trademark nov 5, 2015. now what??
Expert:  Delta-Lawyer replied 1 year ago.
Well, dang. Things get more complicated now. Here is a summation of the process of challenging a mark with a link to the site for reference: Under the Lanham Act, any party who may be damaged by the actual or proposedregistration of a mark is entitled to challenge the registration. If the mark has been published for proposed registration on the Principal Register, the party—usually the owner of a competing mark—can oppose the registration. The opposition must be in writing and be filed within 30 days of the proposed mark’s publication in the Official Gazette. The U.S. Patent and Trademark Office (USPTO) may grant extensions of the 30-day period upon written request.Under rules promulgated by the Madrid Protocol, if a party wants to oppose a trademark registration, the period for filing an opposition cannot be extended more than 180 days from the date the application was published. Those extensions must be now requested in one of two ways. A party opposing registration can, after the first 30-day period, either:request an extension of 30 days (granted upon request), followed by a second request for a further extension of 60 days (upon a showing of good cause), followed by a final further extension of 60 days (upon stipulation or written consent of the applicant), orrequest an extension of 90 days (upon a showing of good cause), followed by a final further extension of 60 days (upon stipulation or written consent of the applicant).A party who intends to oppose a Section 1 or Section 44 trademark application can do so electronically or on paper. An opposition to a Section 66 application (an application under the Madrid Protocol) must be filed electronically.If the mark has already been placed on the Principal Register, the party may petition the USPTO for cancellation of the registration. (15 United States Code, Section 1064.) A cancellation petition may be filed:within five years from the date the mark is published in the Official Gazetteany time if the mark becomes generic or is abandoned or its use becomes fraudulent in some way, orany time, if the mark is a certification mark and it is being misused (for instance, the registrant no longer exercises control or the registrant begins to manufacture goods subject to the certification).Marks proposed for placement on the Supplemental Register are not published for opposition. If a party believes that a mark’s placement on the Supplemental Register may cause it harm, the party may file an application with the USPTO to have the registration cancelled. (15 United States Code, Section 1092.)When a petition for opposition or cancellation is filed, or the USPTO declares an interference, an inter partes proceeding to resolve the dispute will be scheduled before the Trademark Trial and Appeal Board. (15 United States Code, Section 1067.) At the conclusion of this hearing, the Patent and Trademark Commissioner may:refuse to register the opposed mark (in an opposition case)cancel the registration of a mark or place restrictions on its use (in a cancellation case)refuse to register any mark, or some or all of several marks (in an inter-ference case)register the opposed mark or marks of persons who are found to be entitled to ownership, ororder concurrent registration of marks along with conditions or restrictions on their use designed to prevent consumer confusion in the marketplace.The USPTO will cancel a mark on its own—without anyone asking for it—if the mark’s owner fails to timely file a Section 8 Declaration showing that the mark is still in use. Because this form must be filed between the fifth and sixth year following the initial registration, and because the USPTO doesn’t send a reminder, the registrations of many marks are cancelled for this reason. And because the USPTO also doesn’t send notice of the cancellation, many trademark owners continue to use their marks in the belief that they are registered, when they’re not.The fact that a mark’s registration is cancelled in no way affects the right of the mark’s owner to challenge other users of the mark on the basis of first use. But as long as the mark remains unregistered, the owner will not be entitled to the benefits of registration should a trademark infringement suit become necessary. http://www.nolo.com/legal-encyclopedia/opposing-canceling-trademark-registration.html If you are going to challenge their filing now, or in the future once the mark is granted, I would urge you to actually hire a certified and experience IP lawyer in your area. It just so happens that one of the better IP firms outside of the NYC/D.C. areas is in Indianapolis. Here is a link to their site: http://www.uspatent.com/ I would get with them to help you not only file to challenge this entities attempt to register, but would also, while you are in the process, see if they will simultaneously handle your own filing. Let me know what other questions you have here...
Expert:  Delta-Lawyer replied 1 year ago.
Just checking to see if you have any other questions.