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[crisdecuba]

I established a YouTube channel name in 2017 and now I see someone trademarked the same name 3 months ago for a similar (same trademark class, different kinds of content) company. I found out about this because I was starting the process of trademarking and did a basic keyword search.

Am I basically screwed? I’d like to fight this, but is this kind of thing a lost cause?

For what it’s worth, I’m in the US. Thanks in advance!

 

[Reptars Revenge]

Since it was filed around 3 months ago it is probably waiting for examination. During the examination period the examiner looks for any confusing similar marks that are registered on the federal trademark database. If they don’t find anything the trademark gets published where anybody with a vested interest may file an opposition (confusingly similar standards) . Since you have superior prior rights you could object to it. You would also have 5 years after it’s registered to reject the trademark for similar reasons. After that it becomes incontestable for prior mark reasons.

What Does "Published for Opposition" Mean for a Trademark?

A trademark is published for opposition for the purpose of providing third-parties the opportunity to file a trademark opposition.

yourtrademarkattorney.com

Filing a Notice of Opposition: How to Oppose a Trademark Application

A trademark application may be opposed by filing a Notice of Opposition during a specific 30 day window that occurs during the application process.

www.gerbenlaw.com

 

[crisdecuba]

Since it was filed around 3 months ago it is probably waiting for examination. During the examination period the examiner looks for any confusing similar marks that are registered on the federal trademark database. If they don’t find anything the trademark gets published where anybody with a vested interest may file an opposition (confusingly similar standards) . Since you have superior prior rights you could object to it. You would also have 5 years after it’s registered to reject the trademark for similar reasons. After that it becomes incontestable for prior mark reasons.

What Does "Published for Opposition" Mean for a Trademark?

A trademark is published for opposition for the purpose of providing third-parties the opportunity to file a trademark opposition.

yourtrademarkattorney.com

Filing a Notice of Opposition: How to Oppose a Trademark Application

A trademark application may be opposed by filing a Notice of Opposition during a specific 30 day window that occurs during the application process.

www.gerbenlaw.com

Thank you very much for explaining. On the USPTO site it says published for opposition on July 21, 2020, so it looks like that opposition period is about to start. And very quickly as I looked into how to file an opposition it felt like an attorney is necessary. Is that pretty much my only course, or can people do this on their own?

 

[Reptars Revenge]

Oh wow so yeah you will have 30 days from July 21, 2020. It would be important also to look if they are filing their trademark as intent to use or have been using it already in commerce and what date just to make sure. An attorney is always recommended but you most likely could file a notice of opposition by yourself. They would need to respond within 30 days with an answer. If they do there is like a mini trial with briefs but not hearings or court or anything. Best case scenario would be you file the notice of opposition and they just give up bc they see its not worth it.

You can find some really good examples online of sample notice of oppositions to write a similar one. Here is a good one for entertainment videos.

https://ttabvue.uspto.gov/ttabvue/ttabvue-91251822-OPP-1.pdf

 

[JSoup]

Look and see if they've used the trademark for anything.
If they haven't, talk to a lawyer.
I had this issue for a project I worked on some seven years ago. I was able to show a judge that I had produced works under my name for longer than the other guy had been alive and the judge agreed this seemed like copyright trolling.

 

[GymWolf]

If you get a couple of millions from the lawsuit don't forget us my dear friend

 

[crisdecuba]

Oh wow so yeah you will have 30 days from July 21, 2020. It would be important also to look if they are filing their trademark as intent to use or have been using it already in commerce and what date just to make sure. An attorney is always recommended but you most likely could file a notice of opposition by yourself. They would need to respond within 30 days with an answer. If they do there is like a mini trial with briefs but not hearings or court or anything. Best case scenario would be you file the notice of opposition and they just give up bc they see its not worth it.

You can find some really good examples online of sample notice of oppositions to write a similar one. Here is a good one for entertainment videos.

https://ttabvue.uspto.gov/ttabvue/ttabvue-91251822-OPP-1.pdf

Thank you so much - I really appreciate it (especially the example to go from). I think the last question I have is whether I should also move forward now on my own trademark application, or would that be something to wait on? From what I've read, the opposition process can take quite some time to resolve.

 

[Elektro Demon]

Fuck the name bro, make a deal and take the money.

 

[crisdecuba]

Fuck the name bro, make a deal and take the money.

I would totally consider that, but when I looked into the company, seems they weren't willing to pay $1000 to secure the domain name from a squatter, so I doubt they'd have the money to offer me, and I hope that this also means they won't seek to fight the opposition.

 

[Reptars Revenge]

Thank you so much - I really appreciate it (especially the example to go from). I think the last question I have is whether I should also move forward now on my own trademark application, or would that be something to wait on? From what I've read, the opposition process can take quite some time to resolve.

Also of note you can send a good ole fashioned cease and desist letter telling them unless they take their trademark down you will see them in court under common law protections. You should definitely file your own trademark but since this other one was filed first even with inferior rights your application would be put in suspension status until the first one is cancelled

 

[crisdecuba]

Also of note you can send a good ole fashioned cease and desist letter telling them unless they take their trademark down you will see them in court under common law protections. You should definitely file your own trademark but since this other one was filed first even with inferior rights your application would be put in suspension status until the first one is cancelled

That makes sense, thank you. And on a side note, it's shocking to me (as a new person to this kind of stuff) how much lawyers cost for the entire process - I'm seeing estimates in the tens of thousands if this thing goes all the way through. We'll see how the DIY route goes. Thanks again for the fast help!

 

[Reptars Revenge]

That makes sense, thank you. And on a side note, it's shocking to me (as a new person to this kind of stuff) how much lawyers cost for the entire process - I'm seeing estimates in the tens of thousands if this thing goes all the way through. We'll see how the DIY route goes. Thanks again for the fast help!

Oh yeah I imagine just because it lasts like a year and you have to draft interrogatories and request for documents as well as multiple briefs. Trademark filing you should definitely try yourself. The website is very easy to navigates and it’s only hard if there’s a similar mark.

 

[Yoboman]

Reptar dropping knowledge bombs like nothing, I love it

 

[Foamy]

What's your Youtube channel and why don't you have a link in your profile?

 

[Reptars Revenge]

Reptar dropping knowledge bombs like nothing, I love it

Thanks woot, we are all knowledgeable in one area or another, just helping the community.

Def think send a quick letter asking them to stop maybe say you'll pay for a new name for them(225) saving you both money of course they could just be dicks, file a notice of opposition and hopefully they don't respond and you win by them just looking at it. Then full out war.

 

[Reptars Revenge]

What's your Youtube channel and why don't you have a link in your profile?

lol avatar quote

 

[crisdecuba]

Oh yeah I imagine just because it lasts like a year and you have to draft interrogatories and request for documents as well as multiple briefs. Trademark filing you should definitely try yourself. The website is very easy to navigates and it’s only hard if there’s a similar mark.

Thanks to your advice and several example notices of opposition I was able to file my own notice of opposition the day after the period began. So far I haven't seen anything, but there several weeks left. I'm really curious how they would try to respond given my prior use in commerce versus their intent to use, but really I just hope they drop it. Thanks again!

 

[moose fatcat]

This is why I have to use the alias Moose Fatcat.

Nobody believes me that my real name is Garfield Pawsinc. Not after the settlement, anyway...

 

[MrFunSocks]

I cannot believe this. How did they possibly manage this when we all know the names database has a uniqueness constraint so 2 people can't have the same name. Outrageous.

 

[Yoshi]

Someone also trademarked my name

 

[Reptars Revenge]

Thanks to your advice and several example notices of opposition I was able to file my own notice of opposition the day after the period began. So far I haven't seen anything, but there several weeks left. I'm really curious how they would try to respond given my prior use in commerce versus their intent to use, but really I just hope they drop it. Thanks again!

No problem good luck definitely keep us updated. If it’s exactly the same I can’t see them even responding especially since you were talking about how they wouldn’t pay for a domain name price.