Unmentionables

Identifying Trademark First-Use For Lingerie Manufacturer


Background

Our client received a Cease and Desist letter from another company claiming prior use rights in competing lingerie products. While our client filed for the trademark rights before the other side, Marksmen was tasked was determining, if possible, when the competing party first sold the competing undergarments and if that date was before or after our client’s first use.

Challenge

Usually Marksmen conducts background research on the target company of our investigation and then calls (using a suitable pretext) to ask them specific questions regarding use of their trademark. In this instance, the client wanted us to contact the other side only as a last resort, and if we did, instructed us to NOT mention or ask any questions about the trademark in question.

Insights & Approach

Because Marksmen has over 85,000 trademark investigations under its collective belt, finding ways to triangulate information from varying sources is something we’re experts at doing (even when there are limitations on how we approach a target imposed by our client.) We have proprietary databases at our disposal, but we have also developed clever ways in using common tools such as social media, government filings and even search engines.

1. We double checked USPTO records for dates when marks (for both sides) were filed and their claims of first use in commerce.

2. We next located domain name registrations for our client (including a masked registration) using the mark in question months before their filing date.

3. We thoroughly reviewed the target’s website and found no use of the mark.

4. We searched the Internet at large and discovered an article outlining the target’s intended launch date of the lingerie in new boutiques aimed at younger consumers. The planned launch date of the mark was a month AFTER our client’s first use.

5. We combed through archived news databases and found corroborating information for the target’s planned launch date in the sale of lingerie using the competing mark via a transcript of an investor meeting (a month AFTER our client’s use).

6. We then contacted the target company and requested any product catalogues corresponding with the dates/boutiques mentioned in the article and the investor meeting transcript (without mentioning the the name of the mark). We also obtained the drop date for the shipping of the catalogues.

Solution

Through the combined research of diligent searching on the Internet, uncovering an obscure investor’s meeting transcript in archived news databases and obtaining printed sales materials, Marksmen was able provide our client with the evidence required to prove that their first use date preceded the complaining competitor’s use. Mission accomplished.

Results

Leveraging the evidence Marksmen gathered proving our client’s senior rights to their competitor for competing lingerie products, our client was able to obtain a favorable settlement.

 


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Marksmen’s Intellectual Property experts provide discreet, confidential, and relentless IP (trademarkdomain name and patent) investigations, acquisitions, and online brand protection services for businesses of any size.