Can An Unregistered Mark Be Defended?

Once an individual or organization uses a mark commercially, they are entitled to common law rights and can sue others for trademark infringement if necessary. Of course, registering a trademark endows the owner with certain legal advantages that a common law mark would not afford:

  • A registered mark is less likely to be infringed upon, because others can search public records and find the mark
  • The mark’s owner can take legal action in federal courts
  • The ability to register the mark in foreign countries
  • The ability to register the mark with U.S. Customs to halt importation of infringing goods

For example, Ultimate Arcade Inc. (UAI) has issued a series of trademark infringement suits concerning the use of the word “Flappy.” The company has used the mark since February 12, 2006 when they released the game, called Flappy, hosted by Big Fish Games.  Though the mark was not registered until quite recently, it was licensed previously.

“We signed a distribution agreement with Ultimate Arcade Entertainment about 5 years ago,” said a representative of Big Fish. “UAI owns the game, and we have licensed it.”

Ultimate Arcade was in a rush to register the trademark after the success of the Flappy Bird app, developed by Dong Nguyen. After Nguyen’s app was removed from the market, a series of very successful Flappy Bird clones appeared. Though the trademark registration process is not complete, UAI plans to “fully pursue and enforce its common law rights,” according to their lawyers. UAI has issued a message to Apple to inform all infringing app makers to remove the mark from their work.

According to UAI’s attorneys, “we are only asking developers to respect our trademark rights and remove ‘Flappy’ and any confusingly similar terms or marks from the names, metadata, keywords and game descriptions to stop the confusion.”

Los Angeles Business Litigation Attorney That Handles Trademark Infringement Cases

If your company owns a mark that has been co-opted by infringing companies, you need a diligent and thorough trademark infringement attorney on your side.

Attorney Robert G. Klein has been aggressively defending victims of trademark infringement and other intellectual property disputes for over 25 years in the Los Angeles area. Klein, who has brought over 70 cases to trial, has the kind of magnetic courtroom personality that your business needs to win over a skeptical jury. For more information, call our firm at (323) 653-3900 ext. 110

[Did You Know: According to the International Trademark Association, consumer confusion is not a requirement for infringement in the EU.]

Klein Trial Lawyers—Los Angeles business litigation lawyers

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