New trademark owner threatening to sue someone with same name
January 19, 2024 12:32 PM Subscribe
Recently, a friend of mine was issued a C&D from using the company name they've actively used for well over a decade, by someone who just trademarked the name for the same use. Are they screwed?
Two things before I go on: my friend is already seeking legal help, and the trademark owner appears to be legit (not a squatter or scam artist).
Lengthier detail:
For about ten years, my friend has had a company, which I'll refer under the pseudonym GALENTINE, selling personally designed and printed GALENTINE cards both online and off. They have an active Etsy shop with reviews dating back many years, and has been promoted as a vendor at conventions and other pop up events under the name GALENTINE. Web searches for GALENTINE bring up their Etsy or website at the top of results. They also have had the URL GALENTINE.com for 10 years. However, she never trademarked the name.
Just recently, they were sent a cease and desist by someone who the day prior officially was given the trademark for the name GALENTINE, also making cards. This person had previously registered domains such as GALENTINE.ch and GALENTINESALES.com, but only in the past year. A look at their social media shows they have only launched their line of GALENTINE cards in the past few months.
I'm shocked my friend never trademarked the name. Regardless, it's apparent this new person had run across my friends stuff previously, and not just by chance the day after their trademark was approved, based on the URLs they received which were alternatives to GALENTINE.com.
My friend is seeking all options, and I've helped steer them to resources and lawyers, but they are wanting to make sure they don't go down a path that will cost an unreasonable amount of money. They've poured their heart into the GALENTINE business, but not enough for a 5 figure legal battle.
Thoughts? Does anyone know if her established use of the name would potentially quickly have the trademark office revoke the current registration, even though its been through their approval process (ie, can you contest a trademark even after the review process?)
Two things before I go on: my friend is already seeking legal help, and the trademark owner appears to be legit (not a squatter or scam artist).
Lengthier detail:
For about ten years, my friend has had a company, which I'll refer under the pseudonym GALENTINE, selling personally designed and printed GALENTINE cards both online and off. They have an active Etsy shop with reviews dating back many years, and has been promoted as a vendor at conventions and other pop up events under the name GALENTINE. Web searches for GALENTINE bring up their Etsy or website at the top of results. They also have had the URL GALENTINE.com for 10 years. However, she never trademarked the name.
Just recently, they were sent a cease and desist by someone who the day prior officially was given the trademark for the name GALENTINE, also making cards. This person had previously registered domains such as GALENTINE.ch and GALENTINESALES.com, but only in the past year. A look at their social media shows they have only launched their line of GALENTINE cards in the past few months.
I'm shocked my friend never trademarked the name. Regardless, it's apparent this new person had run across my friends stuff previously, and not just by chance the day after their trademark was approved, based on the URLs they received which were alternatives to GALENTINE.com.
My friend is seeking all options, and I've helped steer them to resources and lawyers, but they are wanting to make sure they don't go down a path that will cost an unreasonable amount of money. They've poured their heart into the GALENTINE business, but not enough for a 5 figure legal battle.
Thoughts? Does anyone know if her established use of the name would potentially quickly have the trademark office revoke the current registration, even though its been through their approval process (ie, can you contest a trademark even after the review process?)
This is a really common scam, by the way.
posted by Lyn Never at 1:09 PM on January 19 [20 favorites]
posted by Lyn Never at 1:09 PM on January 19 [20 favorites]
Not legal advice and your friend should get some. Extensive prior use in commerce in the relevant jurisdiction should be sufficient to defeat another trademark claim. How long and expensive the process of fighting a junior user's claim might be is hard to predict without knowing more about the revenues involved and the other party. I would point out that a c&d is not legally binding and, while your friend doesn't want to sleep on their rights (*), the junior user would need to sue for bad things to happen right away.
This is crappy behavior on the part of the registrant and it would be a public service to fight them.
(*) A registered trademark doesn't become "incontestable" until after five years of use and a further filing by the registrant. Before that, a third party may contest the validity of the mark on the register (and even an "incontestable" mark can still be invalidated through litigation, though there are more hoops to jump through).
posted by praemunire at 1:13 PM on January 19 [2 favorites]
This is crappy behavior on the part of the registrant and it would be a public service to fight them.
(*) A registered trademark doesn't become "incontestable" until after five years of use and a further filing by the registrant. Before that, a third party may contest the validity of the mark on the register (and even an "incontestable" mark can still be invalidated through litigation, though there are more hoops to jump through).
posted by praemunire at 1:13 PM on January 19 [2 favorites]
I am a trademark attorney but not you or your friend's trademark attorney and this is not legal advice. She needs to contact a qualified trademark attorney here because based on what appears to be the length of time that she has used the mark compared with the registrant, her claim is possibly superior.
One of the questions that a person filing an application to get a new registration must swear to is that they believe that they have the rights to the mark and given this person's action of waiting until they get a registration to send out a cease and desist, it sounds like they knew very well about your friend and went ahead anyway.
In other words, this all stinks of potential bad faith in obtaining the registration and that can be used to get the registration cancelled.
posted by tafetta, darling! at 1:14 PM on January 19 [34 favorites]
One of the questions that a person filing an application to get a new registration must swear to is that they believe that they have the rights to the mark and given this person's action of waiting until they get a registration to send out a cease and desist, it sounds like they knew very well about your friend and went ahead anyway.
In other words, this all stinks of potential bad faith in obtaining the registration and that can be used to get the registration cancelled.
posted by tafetta, darling! at 1:14 PM on January 19 [34 favorites]
I recommend our friend create screenshots and other durable evidence of the history of her use of the trademark. Download or screenshot her Etsy history. Create PDFs or download or screenshot anything from the past where her work was promoted under the Galantine name.
She wants to avoid a situation where a bad actor contacts Etsy and other channels with a similar cease and desist. The worst case would be your friend's Etsy account getting taken down, and she loses access to the proof she needs to contest the trademark.
posted by Winnie the Proust at 2:17 PM on January 19 [18 favorites]
She wants to avoid a situation where a bad actor contacts Etsy and other channels with a similar cease and desist. The worst case would be your friend's Etsy account getting taken down, and she loses access to the proof she needs to contest the trademark.
posted by Winnie the Proust at 2:17 PM on January 19 [18 favorites]
I have a heretofore unused domain name that has been the topic of offers, threats, abandoned trademark applications, and email "mistakes" (I have thought in order to create a likelihood of confusion) that I have received consistently over the 15 or so years that I've had it. IANAL but my street/jailhouse knowitall sense is that it's likely your friend only received a nastygram. For nippers taking that angle my approach has been to ignore everything that isn't delivered by a process server. Receiving something on paper is a step in that direction, but my opinion is that it's safe to ignore until these people file something with a court to make it real.
Ignore it and your friend may not hear from them again, there's no obligation to reply to a stranger's letter saying "hey gimme that," much less an email. Without a process server they can't prove that you ever saw anything from them anyway, and that involves paying a lawyer real money. Bumptious threat letters on some doof's letterhead cost a pittance in comparison.
Circling back around, my understanding is if they registered a trademark matching someone else's domain name, they are going to have an uphill battle to say the least. According to Nolo Press, the first commercial user of a mark owns it. Registering the actual mark is not necessary to successfully defeat an attack.
posted by rhizome at 3:19 AM on January 21 [1 favorite]
Ignore it and your friend may not hear from them again, there's no obligation to reply to a stranger's letter saying "hey gimme that," much less an email. Without a process server they can't prove that you ever saw anything from them anyway, and that involves paying a lawyer real money. Bumptious threat letters on some doof's letterhead cost a pittance in comparison.
Circling back around, my understanding is if they registered a trademark matching someone else's domain name, they are going to have an uphill battle to say the least. According to Nolo Press, the first commercial user of a mark owns it. Registering the actual mark is not necessary to successfully defeat an attack.
posted by rhizome at 3:19 AM on January 21 [1 favorite]
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Can your friend prove how long she's been actively using it? She has common law rights, and those can be powerful even against bigger companies.
You can learn the process of contesting here (bottom of page). It sounds like they either didn't do their due diligence or didn't and didn't care.
Really the only thing that matters is if she can show she has actively been using it and that there is a likelihood of confusion between their product and hers.
Good luck!
posted by mermaidcafe at 1:00 PM on January 19 [9 favorites]