Plaintiff owns the registered EVEROAST trademark for chicken. Its priority date is August 2009. Its former counsel sends a demand letter in 2012 to defendant regarding its common law use of EVERBEST for ham. The complaint states that former counsel had not heard of defendant’s mark prior to then. The defendant says ‘a ha! It is I, defendant, that has priority of March 2009 on you!!! Unregister that registration you are brandishing!! I will use your demand letter to me as evidence of likelihood of confusion!!” And defendant files a cancellation petition. Now plaintiff is seeking a declaration of validity of its registration, and it has to talk its way out of its demand letter.
OK, let’s be clear. I don’t know the background in this matter so my practice pointer is directed towards general situations and not particular ones. General practice pointer: you have to understand the limits of your first use investigation. In this day and age a party’s website is a pretty good indicator of a trademark’s first use date, but it’s not foolproof. You may think you know your adversary’s first use date, but you have to tell your client that when a party’s back is against the wall, it can sometimes come up with some low-key use that wasn’t reported on the Internet. Sometimes, if your priority claim is just a few months or so, it is within a margin of error. You have to evaluate how to phrase the claims in your demand letter (or whether you should send one at all), lest the table gets turned on you and you find yourself telling a judge that you didn’t mean what you said about channels of trade, etc.
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