Ask HN: Trademark Trouble

Check with a good IP lawyer in your area. In general, with trademarks, first use in a given geographic area gives you superior rights over a subsequent mark that is federally registered but only later brought into use. With respect to the geography in which the first use takes precedence (this is called "common law trademark rights," the junior mark (i.e., the one used later in time though first registered) will normally wind up being the infringing mark concerning use in that area (thus, Amazon registered a powerful mark but wound up having to pay a small Minneapolis bookstore known as "Amazon Bookstore" to settle up with it for infringing its common law rights in the Minneapolis area - which rights were superior to Amazon's in that area owing to the small bookstore's having been the first to use the Amazon mark in that area, even though they never registered it).

These areas are complex and I can't advise on your specific case in a public forum. I note the above analysis only to suggest that you explore your rights further - you very likely hold the strong hand here.

Do you have many customers and do they identify you through the logo? You may have accumulated some good will in that case. However, as you have not registered the mark, there is no legal history.

As it is too late to contest their registration, your options are limited. A legal professional will be able to give more detailed advice but from my unprofessional understanding you may be able to preserve your use of the mark by negotiation with the company or possibly using good will and prior use in court. I do not think you can stop them doing anything however.

1. Is this something you want to spend time and money on?

2. If the above answer is yes, is the other party in a position to not care about time and money?

3. If the above answer no, and if you can prove that your trademark is older then talk to a lawyer.

4. Find out the following from the lawyer: If your case is strong, and how much money and time might be require to defend the trademark. Then and only then would I go ahead. And even then I'd see if I could talk to the other party (if my lawyer told me I was in the right) and settle the case.

Another cost factor: Is going the legal route more expensive than a rebrand?

And also keep in mind that sometimes you can be talking to a lawyer who just wants to rack up billable hours. So try to find one that really knows about IP and comes recommended to you...