The Trademark Dilemma

Here’s the trademark dilemma: 

The Dilemma!

You own a trademark that you have used for almost twenty years. Another entity has registered a similar trademark. 

The second half of both trademarks are virtually identical. The first half of both trademarks, while different in appearance, sound and meaning, both identify parts of the body in connection with which both products, which are nearly identical, are intended to be used.

In the next case, you own a trademark that was refused registration by the U.S. Patent and Trademark Office for the reason that the entirety of your mark forms the dominant element in a prior registered mark owned by someone else. The goods involved in this case and sold by both parties are closely related.

In both cases the complaining parties believe that the confusingly similar registered trademarks are no longer being used by their respective owners. 

What should the complaining parties do?

Pick a hired gun!

In both cases they hire highly respected law firms; in the first case a large national law firm with offices throughout the country; in the second case a long-established intellectual property boutique law firm with a single office in a major U.S. city.

The Large Law Firm Attorney

The lawyer for the large national law firm pays the U.S. Patent & Trademark Office a $400.00 filing fee and prepares a Petition for Cancellation of the similar registered trademark with multiple exhibits which he files with the Patent Office’s Trademark Trial and Appeal Board in February. He guesses correctly that the owner of the U.S. Trademark Registration that he sought cancellation of no longer uses its mark. That owner ignores the Petition for Cancellation and the Patent Office issues a Judgment by Default in the Cancellation Proceeding in late August and, simultaneously, the U.S. Patent & Trademark Office cancels the trademark registration that he objected to.

The Intellectual Property Boutique Firm Lawyer

In the second case, the I.P. boutique lawyer emails the lawyer for the owner of the registered trademark a page and a half letter in which she asserts that that registrant is no longer using its mark, states that her client is exploring its options as to whether to file a Petition for Cancellation of that trademark but states that she prefers to resolve the matter amicably. After being advised of this communication, the registrant’s lawyer determines that, in fact, the registrant has ceased the use of the complained of registered trademark and seven days after receiving the initial complaint about it, for a zero dollar filing fee with the U.S. Patent and Trademark Office, obtains the cancellation of that  trademark registration, thereby resolving the second attorney’s complaint.

The Same Results Achieved in Highly Different Ways!

So, attorneys need to choose their weapons wisely and consumers of legal services need to ask their attorneys, whether it’s a trademark matter, a divorce matter, a real estate matter, etc., what the most cost-effective and efficient means are to obtain the result that they desire. See


The material on this website is for informational purposes only. It should not be considered legal advice and is not intended to create an attorney-client relationship. If you have questions regarding any material presented herein, we recommend that you consult an attorney. This web site and information presented herein were designed in accordance with Illinois law. Any content in conflict with the laws or ethical code of attorney conduct of any other jurisdiction is unintentional and void. I am a Chicago attorney practicing in the areas of trademark, copyright and information technology law as well as general corporate law. Formerly a trademark examining attorney with the United States Patent and Trademark Office, I have been in private practice since 1987 representing clients in a wide variety of industries, including the consumer products, financial services, information technology and entertainment industries. You can contact me at, by phone at 773.934.5855 or by mail at 417 S. Jefferson St., #304, Chicago, IL 60607 USA
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