QUESTION: I bought a domain, then found there is an Etsy shop with the same name. Does this person have legal claim to the name?
I am in the beginning stages of starting an ecommerce business, came up with a name, and bought the domain. I just found an Etsy shop with the exact same name that has been active for a few years. Does this Etsy shop owner have legal claim to the name enough that it would prevent me from trademarking and moving ahead? Would she be able to sue me or take any legal action against me?

ANSWER: The right to use a trademark goes to the first user of the trademark. Simply registering a domain name does not constitute trademark use. Therefore, the person who has been using the name for his/her Esty store likely has the right to use the name – as between the two of you.





QUESTION: When do I trademark, before or after I begin to establish my brand?
I checked USPTO’s TESS, and the name I’d like to trademark for my brand is available. Should I start the trademarking process now, while still in the planning phases of my business, or would my application be more successful if I had a product to show for it, but taking the risk of the name being filed for by another party in the meantime? Thank you for your time!

ANSWER: If you have not yet started using your trademark, you can file an intent to use application. Doing so may give you “priority” over another once you start using your trademark since your date of first use will go back to the date of application filing.



QUESTION: I have a registered trademark in one class. If I want to register the same name in an additional class what am I required to do? My trademark is in 037 and I want to add a related product class or maybe an education class to that same registered name. By the way, I just renewed my 8 & 9 form for $425 in the single 037 class.

ANSWER: To add an additional class of goods, you will need to file a new trademark application.



QUESTION: Similar trademark with an S at the end. Can and Should i oppose?
I’ve got a recently registered trademark under IC 041. US 100 101 107 classifications that someone attempted to purchase from me. However after I flat out rejected their offer they went ahead 2 weeks later and registered the SAME trademark name but with an S at the end of it under a different classification of IC 036. US 100 101 102. For example is my trademark was: AVIOITO they then went and registered their under AVIOITOS with the S at the end and the classification being the only difference. My question is: 1. Will the trademark office allow this to go through? 2. Are they infringing upon my mark? 3. Should I look to file an position? 4. What’s the best approach to dealing with this?

ANSWER: Though not definitive, the substantially same trademark used in a different class of goods or services may be allowed by the trademark office. And since they are different goods/services, there is likely no consumer confusion that would equate to infringement.


Trademark Confusion/Protection in Different States


QUESTION: Can another business in another state use my trademarked business name?
I have a business in VA with a trademarked name. I just discovered another business in TX using the same name. My business started out doing what they???re currently doing, but has since evolved. Their business does what we started our doing. Because my business name is trademarked, are they allowed to use the name? I’m a dog trainer and behaviorist, but started out doing more canine-human fitness. I’m doing more training and behavior work, but have kept my company name. This other company does canine-human fitness. Is this infringement? I sent them a message, to which they responded by asking if someone was confusing their business with mine. But.. it’s the same exact name and I spent a lot of $$ trademarking this name when I started my business nearly 5 years ago.

ANSWER: If you have a federally registered trademark, you may have the right to stop an infringer in another state. If you only have a state registered trademark, you may still have the right to stop an infringer in another state if you are also doing business in the other state and first used the trademark in the other state before the infringer.



QUESTION: Cease and desist letter, what can we do with the merchandise?
We create and sell card games. Recently we received a cease and desist letter for trademark infringement on one of the games. We did stop selling the item, but what can be done with the merchandise on hand. Can we donate them to Children’s hospitals, or after school programs without risking potential issues in the future? Or do they have to remain in storage?

ANSWER: Typically, part of the settlement agreement to stop selling infringing goods includes “what can the infringer do with the remaining goods”. Simply because you stopped selling the infringing goods does not mean you have the right to “dispose” of the remaining goods.

Infringing Products on Amazon


QUESTION: A dispute over patented product being sold on Amazon. I’m having a dispute over patented product being sold on the internet (Amazon. com) It’s a sports accessory. My competitor has a pending patent application and asked me to discontinue selling the product. I would like to sell out my inventory before moving on. I wonder if can keep selling until he get he’s patent confirmed ? Or he can still sue me after he gets the patent granted for back losses?

ANSWER: Generally, one can only collect damages after a patent has issued, not while the patent application is pending. Therefore, sales of an “infringing” product while the application is only pending does not provide a basis to collect damages or even be considered infringement.

How To Fix Abandoned Patent Application



QUESTION: What does it mean when a utility patent application is abandoned ?
I filed a utility patent application by a lawyer. he did the job and even he sent me the receipt ( USPTO OFFICE ) of filing the app. but after a while the law firm of my lawyer closed and then my lawyer told me that my application is abandoned in USPTO office and didn’t reach to the examiner. I didn’t understand why and what does it mean. so you tell me what shall I do ? is that mean my application is rejected or not ? please help me.

ANSWER: The patent office may have sent something that required a response. If no response was timely filed, your application will have been deemed abandoned by the patent office. You can try to file a petition to revive the application.



QUESTION: Can you tell the details about your product after you file for a provisional patent? At what point is it okay to tell the general public about your invention? Is it okay after the provisional patent?

ANSWER: Yes, you can disclose the details after you file your provisional. However, a provisional does not automatically stop someone from copying your invention. You have to take affirmative steps to stop the copying, such as a cease and desist letter.