[Patent Talk] File Your Trademark First, Register Your Business Second

Recently, a client who runs a cafe came to me for advice after receiving a trademark infringement warning letter. The letter came from a rights holder who had registered, as a trademark, a name similar to the client's trade name before the client did, and it demanded that the client change its trade name on the grounds of trademark infringement. The registered mark and the client's trade name were extremely similar, and the registered services were identical, so this was a case in which trademark infringement would indeed be established.

Because the client had opened the cafe after the trademark application was filed, no prior-use right could be recognized. Nor were there any grounds for invalidating the trademark, since no similar mark was found predating the filing date. Finally, I examined whether the trademark could be cancelled through a non-use cancellation trial on the ground that it had not been used for three years or more. However, the trademark owner was operating a cafe under a trade name identical to the registered mark, and three years had not yet passed since the registration date, so a non-use cancellation trial was not an option either.

In the end, I explained to the client that the only options were to change the trade name as the other party demanded, or to negotiate with the other party and obtain a license in exchange for a fee. After some deliberation, the client decided to change the trade name and presented me with several candidate names. I selected from among them the names with a high likelihood of registration, and the client made a final decision on the new trade name. The client told me that a logo would be created for the new name and that a trademark application would be filed as soon as the logo was finished.

Cases like this, in which a business changes its trade name after receiving an infringement warning letter from someone else, are by no means rare. To avoid this kind of situation...