Legal Question in Intellectual Property in California

Re: Trademark rights

Sounds like you've missed the chance to oppose the registration, but you could petition to have the registration cancelled, based on your prior and continuing use... but the burden of proof is significant.

You can probably continue using the mark in the territories in which you already HAD used it, but expansion will be problematic.

Of course, lots depends on the strength of the mark, nature of the parties' use(s), etc.

Advice: Consult an attorney with the details, so you can get more customized, specific advice.

Re: Trademark rights

As a preliminary matter, the registration for the similar mark is only a problem if it is being used in connection with a product or service in your industry. For example, if the regsitration is for donuts and you provide automotive repair services, then it is isn't a problem. If it was for donuts and you sell bagels, then more than likely a problem.

Assuming the registration is a problem, then no you can't oppose, but you can still cancel the registration if you can prove priority (i.e., earlier and continued use of mark). In order to cancel, you must do so within 5 years of the date of registration or you will lose the right to object and possibly be stopped from expanding the use of your own mark.

The cost of seeking to cancel a registration can be significant, but there are also more creative ways to resolve things as well. You would be well served to seek legal counsel to determine if this issue could be resolved by contacting the other side and negotiating a co-existence agreement or something along those lines.