Patent Attorney and Founder
Question:
Am I correct in thinking that my rights are limited while my trademark is pending?
Answer:
Matt: Yes, that’s correct. While your trademark application is pending, you do not have any federal registration rights to drag someone into court for trademark violation. It wouldn’t be wise to send a cease and desist letter right away.
Matt: What do you think about sending cease and desist letters while a trademark is pending?
Matt: You can send a cease and desist letter while your trademark is pending, but you should have an attorney handle it. If you do send it, you need to be very sure that your first use date is earlier than the third-party infringer. Otherwise, you’re essentially alerting the third party to your intention to register a federal trademark, giving them an opportunity to oppose or potentially cancel your trademark later on.
JD: So it’s something you should be cautious about, right?
Matt: Absolutely.
JD: You don’t want to start a big fight that you might end up losing.
Matt: Don’t kick a hornet’s nest while your trademark application is pending. There have been cases where my clients received cease and desist letters from people with pending trademarks. We looked into it and found that my clients had been in the marketplace for years before the other party, allowing us to file our own trademark and oppose their application. These are straightforward cases for attorneys.