Trademark Office Action Regarding Likelihood of Confusion

[sunnyblue]

Received Office Action Regarding Likelihood of Confusion
Wanted to know if the registered trademark has no evidence of use in commerce, can this argument be made that there is no possibility of use in commerce to cause that likelihood of confusion. Their trademark is 3 years old. There is no evidence via internet they are using it anywhere on their website on other venues and or in search engines. They make products and none of their consumer fashion items use the name they registered.When a mark is not being used in commerce and never was. but was registered with the dates they says they used it in commerce isn't that a violation?

[jk]

Since the registration of their mark has been accepted by the USPTO, if you use their mark and they sue, there is a presumption of their rights since the registration has been accepted by the USPTO. That means you will lose if you are basing your defense on they have not used their mark in commerce. At this point, it is irrelevant because they have their registration to support their position.



and how do you know they never used the mark...anywhere...for any commercial purpose?

[sunnyblue]

Since the registration of their mark has been accepted by the USPTO, if you use their mark and they sue, there is a presumption of their rights since the registration has been accepted by the USPTO. That means you will lose if you are basing your defense on they have not used their mark in commerce. At this point, it is irrelevant because they have their registration to support their position.



and how do you know they never used the mark...anywhere...for any commercial purpose?

Yes we sell the item currently registered in the class we placed the application for. Yes I do know they have the reg and can oppose at publication. There are some cases where similar trademarks were registered, while down the line a court battle ensued. In the future we would be prepared for legal action if necessary. Any other cases that are similar and have been granted would help my office action reply.

I dont know if they never used the mark ever for sure privately , but via research on the internet there was nothing of that name associated with the brand .I cant see how their is no trace of use stored in the search engine from a prior time to this current date now.

[jk]

There are some cases where similar trademarks were registered, while down the line a court battle ensued. In the future we would be prepared for legal action if necessary. Any other cases that are similar and have been granted would help my office action reply.

so is your mark similar or identical? That obviously makes a huge difference.

There are two different issues here. Confusion and simple infringement of their rights.

When you speak of confusion, it is confusion of the prospective customers/consumers where your product is believed to be provided by the other company. If you are speaking of an identical mark, it is not a matter of confusion but one of, simply, they already own the mark. If your use is deemed to be an infringement on their rights, then you lose. They do not have to prove there is a likelihood of confusion. It is a simply matter of: they own the mark and you cannot use it.
[QUOTE]

I dont know if they never used the mark ever for sure privately

, privately doesn't provide any benefit for their claim. It must be used in commerce.

but via research on the internet there was nothing of that name associated with the brand .I cant see how their is no trace of use stored in the search engine from a prior time to this current date now.

just because you can't find it doesn't mean they didn't use it. If this gets to court and you want to try to use that as a defense, go ahead but since the registration was accepted by the USPTO, they have the benefit of the doubt as to ownership of the mark, regardless of where and when it was or wasn't used.

[sunnyblue]

[QUOTE=jk;791022]so is your mark similar or identical? That obviously makes a huge difference.

There are two different issues here. Confusion and simple infringement of their rights.

When you speak of confusion, it is confusion of the prospective customers/consumers where your product is believed to be provided by the other company. If you are speaking of an identical mark, it is not a matter of confusion but one of, simply, they already own the mark. If your use is deemed to be an infringement on their rights, then you lose. They do not have to prove there is a likelihood of confusion. It is a simply matter of: they own the mark and you cannot use it.

, privately doesn't provide any benefit for their claim. It must be used in commerce.
just because you can't find it doesn't mean they didn't use it. If this gets to court and you want to try to use that as a defense, go ahead but since the registration was accepted by the USPTO, they have the benefit of the doubt as to ownership of the mark, regardless of where and when it was or wasn't used.

We have the same word and added a generic term at the end, so the office action says you can say we have no exclusive right to the generic term. Ok sure I know that but the word they have is a noun, which is a generic term anyway. When you file a trademark you are supposed to supply proof of using in commerce. In their TDR there is just a picture, not tag no reference of anything else. They never got an office action as well for nada. Confusion is what the trademark office action attorney states- consumer confusion, there is usually nothing else. But if they own the mark and falsely represented themselves of " use in commerce" that is illegal. I have had marks that we have to prove such as website, invoices, brand recognition proof on computer or otherwise. So if you have an item and place a name on lets say a t- shirt that is good enough for the USPTO? I guess if you can prove you manufacture the item but don't use it that is fine? By showing a specimen with the same words you are registering under such as they did?

[jk]

When you file a trademark you are supposed to supply proof of using in commerce.

and apparently they provided adequate proof to the USPTO so they accepted the registration.

So if you have an item and place a name on lets say a t- shirt that is good enough for the USPTO?

I do not believe that is a use in commerce so no to the general question but there is no requirement of some specific level of use to qualify.

Ok sure I know that but the word they have is a noun, which is a generic term anyway

Apple is also a noun, and quite generic yet Apple has a pretty good claim of exclusive rights to the word when dealing with computers or phones.