[E-trademarks] Expungement/cancellation- minimize costs/push settlement-best approach

[Laurie Marshall]

Matter with a pro-se registrant who refuses to settle. Client has first-use by >10 years and registrant’s 2 registrations in 2 classes are blocking client’s application. 4 uspto fees are a lot of money for my client all at once so looking to minimize costs and force hand on settlement. I know registrant never used in class 25 -she didn't have a website or anything at time of filing 1(a) app and she only sells jewelry. To minimize and spread out the costs, thinking about filing an expungement for the class 25s as a first line of action and then if she still refuses to settle, file cancellations for the class 14s a few months later. But I don't trust this pro se registrant and think she will lie about her use of the mark in the expungement cases (her specimen was a picture of a shirt with a label and tag but looks handmade). Is it easy for a registrant to get over in an expungement by just showing some made up sales receipts? Other alternative is filing cancellation against Class 14s first (and see if we can get her to settle) and if not file cancellations months later against the Class 25s (we need to remove both to get client’s mark through).. Any thoughts on these approaches? Thanks so much!

Laurie Marshall, Esq.
Marshall Law Group, PLLC
TradeMarks The Spot
TMthespot.com
917-566-1003


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