What If Someone Gets The Trademark Before I Do?


Today on the Legalpreneur Podcast, I help you understand what is at stake if you don’t register your trademark. The good news is, if you are the first business to operate under the name you have priority to that name, even if a competitor registers the trademark. Although, without the registered trademark, you will have to settle it in court. The costs of filing a cancellation proceeding, discovery and the time spent fighting for the right to your name is sometimes too expensive for a small business to undertake.

The right to cancel a trademark due to priority expires once a trademark has been in business long enough to renew said trademark. Once the trademark has been renewed, any businesses operating under the name effectively have no legal grounds to the title and must rebrand. 

Starting a business is hectic but if you’re launching or are in the early stages of business, I encourage you to register your trademark. Owning your brand up front allows you to confidently do business, so don’t wait to legally protect yourself and file your trademarks!


Key Takeaways:

[0:40] What to do if you’re in business first but haven’t filed for a trademark

[2:00] The business operating under the name first has  priority to trademark the name

[3:00] If another business trademarks your name before you do, it then has to be settled in court

[3:30] A cancelation proceeding costs 2-5k just to file and only gets more expensive from there

[4:20] Discovery is the most expensive part of the proceedings, costing anything from 10-50k

[5:20] Andrea Sager Law was ranked 27th out of 40,000 trademark attorneys last year

[7:10] Our trademark course will help you file and use your trademark to make passive income

[8:50] Canceling due to priority is not valid if your business has already renewed the trademark

[10:30] If you’re launching your business don’t wait to file your trademark

It’s available at the following online retailers:
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The Legalpreneur Podcast is advertising/marketing material. It is not legal advice. Please consult with your attorney on these topics. Copyright Legalpreneur Inc 2022



Legalprenuer transcript:

Andrea Sager  00:03

Welcome to the Legalprenuer podcast. I’m your host Andrea Sager founder and CEO of Legalprenuer Inc. As a serial entrepreneur and someone that works exclusively with small business owners legally protecting their business. I’m dedicated to covering common legal issues faced by business owners, providing you with the business knowledge you need to catapult your business’s growth and showing you just how some of the world’s most elite entrepreneurs have handled these legal and business issues themselves. In true attorney fashion. The information in this episode is not legal advice. This is for informational purposes only and you should always consult with your attorney before implementing any of the information in the show. Hello there welcome back to another episode of the Legalprenuer podcast.


Andrea Sager  00:50

Today’s episode is going to be about trademarks and if you are following me on Tik Tok, you might know a little bit about what’s going on right now on tick tock last week, there was some drama in the boutique world, the clothing boutique world and I got tagged in a couple of videos. And I thought, of course, this is a great podcast episode. So that’s what we’re going to be talking about today. And ultimately, what it comes down to is this issue, you are in business first. And for whatever reason you don’t get the trademark, you don’t know that you’re eligible to apply, you don’t know the importance, you just don’t file you think you’re too smart. Whatever the reason, you don’t pursue the trademark process. And then a couple of years later, you find out somebody else is now using the name. And not only are they using the name, they went and got the trademark after you but you are in business first what is to happen now, this is basically what’s going on. And honestly, I see this all the time. This is not a unique issue to the boutique world.


Andrea Sager  01:52

This is something that I see several times a month. And I want to make sure that I cover this very, very clearly here to make sure that you know the importance of getting your business protected as quickly as possible. Of course, if you need help with trademarks, we can file for you through my law firm. If you want the trademark course, you can always go to the trademark course.com. Just make sure you’re getting the trademark taken care of. Okay, so let’s paint this out. Let’s spell this out. If you are in business, first, you have priority to the name. That means that ultimately, you have the rights to the trademark, it doesn’t matter that the other party went and got the trademark registration, because you were in business first. But this is where it gets to be very, very costly, and why you want to go ahead and just get the trademark from the beginning. So the other party has the registration, what do you do, what would make it nice and clean is you just go to the other party and you say, Hey, I was in business. First, I own the trademark, can you just give me the ownership of the registration. And that would make it very beautiful and clean. But that’s not always what happens. Actually, it’s very rarely what happens. I don’t know if I’ve ever seen that happen. Because the other party that started in business and got the trademark, they’re like, I’m gonna make you fight for it. Because I did the work, I went and got the trademark registration, so you’re gonna have to fight me for it. And then it gets ugly. You both hire attorneys.


Andrea Sager  03:21

And before you know it, you’re 20 3040 $50,000 into a battle for the trademark. But it would have been much cleaner, if you would have just got the trademark from the beginning. Now what happens is you so let’s say you approach the other party and they’re like, Hey, I am not giving you this trademark registration, what do you do, you file a cancellation proceeding. Now the cancellation proceeding, just to get it filed working with basically any trademark attorney, it’s probably going to cost you two to $5,000, just to get it filed. And that’s like when I say just to get it filed. I mean, literally just to get it filed, immediately you go into pre ediscovery have meetings with the other party, try to get it settled. If it’s like obviously, the ideal situation is to get it settled early, but


Andrea Sager  04:15

often is not the case. And that’s why you end up spending 20 3040 $50,000 Because the most expensive part of these cases is discovery where you’re trying to get all the information on the other party, the other party is trying to get all the information on you. And that’s called discovery trying to discover everything about each other. That’s where it gets expensive. And normally it doesn’t go actually go to trial. But in in trademark land, there’s not an actual in person trial for the most part. You just write papers. That’s ultimately what it is, but they’re very expensive papers. So in order to avoid these issues and spending way more money than you have to you just want to get the trademark upfront, if you work with the trademark attorney, it’s going to cost around $2,000.


Andrea Sager  05:04

Now, I was comparing some prices because so my law firm Andrea Sager law, we charge 19 51,950, for one trademark search an application with the search and application that does include your filing fee, one filing fee, but most other attorneys, many other attorneys that I’ve talked to, they’re charging 2500 plus. So we’re very, very reasonable, which I find to be very funny, because I was also ranked number 27 out of 40,000 trademark attorneys last year, which I was really proud of, actually, I don’t know if I ever announced that here. I kept it a secret for a while because I’m just like, Yeah, whatever another ranking, but then I was like, Oh, this is actually a really cool ranking. Because most rankings for trademark attorneys, it’s like, oh, who filed the most applications. And it doesn’t matter what you’re ranked, because it doesn’t mean anything about your success. But this one, it actually did take your success rate into account. So I thought that was actually really cool that I was ranked number 27 out of 40,000 trademark attorneys, and that includes big law attorneys in house counsel, on the top 50 was the attorney for the USPS, the United States Postal Service.


Andrea Sager  06:14

So they literally took into account many, many attorneys. So I was right number 27, which I’m actually really proud of. So anyways, I like to think our prices are very good compared to what we’re doing and where I’m ranked. But I’m just telling you this because for one trademark, you’re going to spend about $2,000. And even though it isn’t a decent amount of I mean, it’s not pennies, obviously, it’s a good amount of money, it’s still way less than what you’re going to spend if you end up in one of these cancellation proceedings. And I’m not done because there’s still more to what could happen. But I want to make sure I full you fully understand this. And so when it comes to filing the trademark, you can file with an attorney, obviously, you can DIY and then we also have our trademark course. So the trademark course.com. We take you through six modules, you get six worksheets, also a bonus module worksheet. Because the bonus, I realized people were finding, oh, I have to rebrand or I’m naming something, how do I pick something that has strong trademark rights. So we created another module, it is how to create a name that attracts and sells. So that’s a whole nother module, then we got some bonuses, you also get a free licensing agreement, because in the course it’s we don’t teach you just how to search and file your applications, we teach you how to create the passive income that comes along with trademarks. So the course is very thorough, I’m a very huge fan of the course, obviously, because I created it.


Andrea Sager  07:38

But it is a great option to not just learn how to file your applications, but also how to enforce get rid of infringers and ultimately create passive income through licensing. So that’s the course. So the course is 1497 or 12, payments of 149. And then, of course, you want to file if you want to file directly with an attorney, one application is right around $2,000. So you make the decision that’s right for you just make sure you’re getting the trademark process done. Okay, so So you know, you have priority if you’re in business first. So you go to them, or you file a cancellation. But if the other party has the trademark for five to six years, you may not be able to to cancel their registration due to priority, because when you file the trademark and you get your registration, the first renewal is done between five and six years, when you make that first renewal, you file this declaration, I’m not going to go into detail because you don’t need to know all the detail. But when you make that declaration, it means that nobody can now cancel your trademark registration for priority. So once you hit that initial renewal, you don’t have to worry about somebody coming after you. That was in business before you because they lost, they lost out they waited way too long. So if you’re on the other side of that, and somebody else has the trademark, but you’re in business first, you better make sure that you go after them before that five to six year marker, because if not, you completely lose out on the rights that you once had, then you got to rebrand. And that’s no fun. I’ve had this happen a couple of times, it’s it hasn’t happened many times in my career, but it has happened a few times. And it is very, very heartbreaking to say the least I had one client, she was in business for about 13 years.


Andrea Sager  09:21

And she was like, Oh, if I have somebody that’s in business close to me, I want to get rid of them. I need to get the trademark. And I had to be the bearer of bad news that told her I’m sorry, but somebody else actually got the registration. And they’ve had it for so long, that you can no longer go after them. And you can go after the other party. So I don’t want to tell you, Hey, you’re always going to experience the worst case scenario with trademarks. But I want to make sure that you’re aware of what can happen. So even if you’re just starting out in business, if you’re getting ready to launch your business, get those trademarks filed, because before you know it, you’re just gonna be operating in business and it’s you’re gonna keep putting it off putting it off before you know it. You’re gonna find somebody If that was in business before, you don’t want that to happen to you, because you’re gonna, I promise you, you’re gonna end up spending way more money than if you would have just got the trademark from the beginning. So that’s what I got for you today. Don’t wait, go get the trademark, and I’ll see you next time. Here at Legalprenuer, we’re we’re committed to providing a supportive legal community. For all business owners. I know how scary the legal stuff can be. If you found this information helpful, I would be so grateful if you could share it with a fellow business owner. And quite frankly, it doesn’t cost anything to rate review or subscribe to the show. Your support helps me reach more listeners, which allows me to support more business owners in their entrepreneurial journey. Have any questions or comments about the show? Feel free to drop me a line on Instagram. I promise I read all of the messages and comments. And if you want to be a guest on the show or know someone that would make a great guest simply fill out our application form and a team member will reach out if we think it’s a good fit. I’ll see you in the next episode.