[E-trademarks] Dealing with copycat

[Edward Timberlake]

One area (among many) to be careful about is not jumping to conclusions
about real world behaviors based solely on statements made in a
registration (or applications for registration) context.

For instance, if an application for registration shows a "first use" of
January 1st, 2023, that doesn't necessarily mean the mark wasn't in use
before January 1st, 2023. It's simply an assertion that the mark was in use
in commerce in connection with the goods at least as early as January 1st,
2023. For all we know, this owner may have been using this mark in
connection with these goods in the 1950's. Or they may not actually be
using the mark in commerce in connection with the goods at all.

Similarly, an application for registration of a trademark filed on a 1(b)
(intent to use) basis is not the same thing as conclusive evidence the mark
was not in use as of the filing date. The real world and registration world
are (ideally) closely connected, but it would be a mistake to assume one
perfectly mirrors the other.

Also, for the purposes of trademark use (in either a registration or real
world context), it can be difficult to know what evidence somebody else has
showing use of a mark in commerce. While we might somewhat reasonably
assume somebody selling shirts would want to do so on the largest scale
possible (such as a website), a very modest amount of evidence (such as a
photo of a shirt on a table a farmer's market) might be enough to cause
common law trouble (and could easily precede a website by many years).

Basically, it's tempting (but can be unwise) to assume to many real world
facts based on statements or evidence in a filing context.

Another factor to consider is whether anybody else is currently using a
similar mark in a related commercial space. If only two people in the world
are using this or similar marks, it might be easier to characterize one as
"original" and the other as "copycat." The existence of other people also
using similar marks would complicate such a characterization.

Typically, the faster, easier solution in trademark matters is to be the
person who has a live federal trademark registration (and more money?) when
the other party doesn't. Absent such an advantage, one is often left to the
messy, old, often expensive methods (the shortcomings of which were part of
the motivation for setting up such a registration system in the first
place).


Sincerely,

Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-the-public/find-a-board-certified-specialist/results/detail/?id=29473>*

*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC

Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950








On Sat, Dec 16, 2023 at 10:33 AM Daniel Kegan via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> A single mark on a Tshirt raises possibility it is ornamentation, not mark
> Unless your client sells web services, it does not “use mark for website”
> but perhaps on web site.
> Question of what are the client’s goods and services is first that came to
> mine.
> Second, you want to closely monitor TSDR for how adverse application
> progresses.
> Fast, Cheap, Quality are an inherent trinity: yu can get two, not all
> three;
> Faster resolution is easy at more expense—
> but need to ensure all your ducks are nicely in row.
> Fast to lose is not a great outcome.
> Others likely have additional suggestions.
>
> Daniel Kegan *  847-452-2599
> Baron Harris Healey, Of Counsel
> <DKegan at BHHLawFirm.com>
> <http://www.BHHLawFirm.com>
> Balanced Counsel for Smart Clients®
> 29 Kendal Dr
> Kennett Square PA 19348-2323 USA
>
>
> On Dec 16, 2023, at 5:26 AM, Bill Ramos via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
> Still learning the ins & outs of this practice and have learned so much
> sitting on the sidelines reading everyone's posts - Thank you.
> I have a predicament. Any suggestions?
>
> Client has been using mark for years for website and clothing line.
> Client finally got around to filing to register the mark.
> A month before client came to me, a copycat filed to register the same
> mark.
> Copycat shows a single webpage named almost the same as clients with a
> single t-shirt bearing client's mark.
> Copycat started using the mark just a month before filing so client has
> common law on his side.
> Any suggestions on handling this copycat sooner rather than later?
> I already sent a cease & desist which copycat ignored.
> TIA =}
>
>
>
> *William D. Ramos, Esq.*
> *Ramos Law, P.A.*
> *Estate Planning*
> *Wills, Trusts, Powers of Attorney*
> *Trademark Registrations*
>
> *Office: 919-200-0377*
> www.BillRamosLaw.com <http://www.ramoslaw.net/>
>
> *Admitted to Practice Law in the State of North Carolina and The United
> States District Courts of the Eastern & Middle Districts of North Carolina.*
>
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