I hired a trademark company to help me register 4 marks and the man handling my registrations said in order for me to get approved and to keep my marks alive; I will need to create a web page just to show the 4 marks being used in commerce and I am not required to sell anything if I don't want to as long as I have a web page that show the 4 marks USPTO will accept all 4 marks as alive and the 5-6 yr declaration sec 8 will be accepted without issues. Now I find out the USPTO has chosen to audit 1 of my 4 marks and the list of goods/services the class(es) they chose are incorrect; in-fact I was not told each mark need to be applied to every item/goods listed under the class(es) this company chose. Can I file an affidavit to request excusable non-use declarations and delete the entire list of goods for 3 years for the 3 marks that are alive and active even though my 1 mark is being audited? I do not want to abandon any of my 4 marks and would like to know if I can sign affidavit requesting the 1 mark being audited be declared an excusable non-use mark for 3 years too? I have never made a business plan, advertised or sold anything. But I have created several designs, slogans, purchased font for company name and purchased the logo for mark being audited. I have been defending my marks since 2011; when a lady stole my slogans, designs, and caricatures on my logo were being sold on 2 web sites she made as well as my domain, the 1 web page I have was also stolen and I fought to get it back too. I just want all 4 marks to be in a non-use state for 3 years until I can get my business going. Can I place the 3 other marks in a non-use state while the 1 mark is being audited and before the audit respond deadline date 7.15.19?
2 Answers from Attorneys
This is far too chewy and complicated to address on a forum like this. You absolutely need a proper evaluation of the circumstances here.
If I am understanding you correctly, you have never sold any good or service? If so, then these marks were never in commerce and can likely be wrestled away from you.
Before you take any further action, I suggest that you consult with a lawyer in private and discuss your best course in more detail. You can start by calling around to several for a free phone consultation, get some insights then pick the best fit to work with.
If you would like to discuss further over a free phone consult, feel free to contact me anytime that is convenient.
Our firm is now referred by the American Bar Association (see under the New York section): http://www.americanbar.org/groups/delivery_legal_services/resources/programs_to_help_those_with_moderate_income.html
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.
This is a complex area and a complex question for which there is no easy answer. Yo have a trademark lawyer. You should ask him or her.