What could I do if I was sent a cease and desist for allegedly using a trademark? 7 Answers as of June 17, 2015

I have started a clothing line which has had positive responses and a major chain outlet is asking me to expand my line and move into more of their stores. I had applied for a trademark of the name and had to resubmit the paperwork a couple of times. Recently a company by the same name in a different state sent me a cease and desist email. They registered the same name a year ago in the clothing category. When I researched the name I chose, I couldn't find anything. I see they are listed in yellow pages as a beauty school. I am not sure that they are actually selling apparel of any sort even though they have the trademark registered that way. They do not have a website that I can find, and all indications point to them being a beauty school. What are my options for my trademark? Do they have the right to ask me to stop using the name? If they are not retailing clothing, do they have the right to prevent others from using the name? Can I use it everywhere but "their" area? I don't think this company has the financial fortitude to mount any real fight, but then neither do I at this point. I can't see how anyone would confuse the two companies, since they do not have a web site and the only business listing I can find shows that they are in the education business. Any advice would be most helpful.

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Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
You may first want to check the classes that the opposing company received registration. While it may not appear that the are selling products of your type, a review of the registered class(es) will let you know what rights they have. If they have the mark registered for the class of product you are selling, you may want to consider making a name change. If they are not in your class of products you may want to contact them. Ignoring a cease and desist without any research can cause damages to accrue. A US trademark is enforceable in all of the US, and is not state specific. You may want to have a consultation with a trademark attorney to review their claim and the best options for your specific case.
Answer Applies to: California
Replied: 6/17/2015
Webb IP Law Group
Webb IP Law Group | Jason P Webb
You need to have an intellectual property attorney dig into the details. It can get complicated and everything can turn on the very particular facts.
Answer Applies to: Utah
Replied: 6/17/2015
DANIEL NESBITT | Hasse & Nesbitt
You have two options: one, continue to struggle, or two, work with a trademark attorney as a professional, and reduce the burden and stress in your life.
Answer Applies to: Ohio
Replied: 6/17/2015
Sebby Law Office
Sebby Law Office | Jayne Sebby
You can register a trademark either in the state your business is in or with the U.S. Patent and Trademark Office. If you product will be sole in more than one state, register federally. Companies can have the same trademark if they are in different classes of goods and services. And different items of clothing can be included in different classes (sportswear vs. coats vs. prom dresses). Send a letter back to this company asking for proof of their registration and and a list of the products they are selling. Also ask to see how they are using the mark in commerce and how long they have been using it. If it turns out that they are using the mark, selling the same types of items as you, and have priority of use, you can always offer to buy the mark from them.
Answer Applies to: Nebraska
Replied: 6/17/2015
Microtechnology Law & Analysis | Daniel Flamm
If they registered the mark before you did, and if they use it in commerce by the time they are required to do so (for clothing) they will likely have the right to use the mark for clothing. Be ware that there are 2 types of US trademark application. One is for things actually being used in commerce, and the other is for intent to use. Either way, the first to file will have priority. However if the application is for an intent to use, the party must actually use the mark in commerce to perfect the application. From what you say, it sounds as if the other party's application has the earliest priority date, but is unclear whether the other party has actually been granted the mark. You probably should engage a trademark attorney to clarify your situation for you.
Answer Applies to: California
Replied: 6/17/2015
    Michael M. Ahmadshahi
    Michael M. Ahmadshahi | Michael M. Ahmadshahi, Ph.D., Esq.
    If the major outlet wants to sell your line of clothing under their name, then you don't need a trademark and you should dispense with fighting the other company. You must know that a cease and desist letter is the beginning of a potential lawsuit. As such, you should have an attorney review the letter and respond accordingly. However, if you don't want to spend money (not advisable) and assuming your statements are true, you should respond to the letter by saying that their trademark is invalid because their trademark is only in connection with beauty school not garments, and also there is no likelihood of confusion because of the nature of their business. At the same time, you should proceed with filing a trademark application for your trademark.
    Answer Applies to: California
    Replied: 6/17/2015
    Banner & Witcoff, Ltd. | Ernie Linek
    You need a trademark lawyer. Much more information is needed to help you with this matter. Who was first to use the name commercially for clothing? If they have a registration - is it federal or state? If federal - you can download the entire file of the case - and look at how they provided proof of commercial use - with the date of first use. If you were first - you can petition to cancel their federal registration. You may have lots of options - but much more information is needed. GOOD LUCK!
    Answer Applies to: Massachusetts
    Replied: 6/17/2015
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