Can I do a cease and desist letter to protect my trademark or service mark now, or do I have to wait?

You can proceed with a cease & desist letter based both on your common law trademark rights and your pending application. Contact an attorney soon though.

I agree with Mr. Thomas that you need not wait. I would add that a formal cease and desist letter coming from an attorney could carry more weight with the person and be more likely to get the desired result. because with a lawyer already involved, the person is more likely to think you would actually sue. You could talk to one or more attorneys and find out what they would charge to do this.

The "nickname" that you've been using for years may NOT serve as a trademark if it simply names some significant aspect of the "scientific subject area" of which you're providing information or "merely describes" any such significant aspect. You may not have any rights to enforce and so, no, you should NOT send a cease and desist letter without first discussing this matte with your own trademark attorney. If you don't have any trademark rights but send the letter anyway then YOU could be sued for any number of claims.

If in fact it appears someone is infringing in an market area that you operating in first you are within your rights in sending a letter. In most cases, it will be more productive to have a lawyer conduct the proper analysis and send the letter this way you are taken seriously. That said, your trademark will be one of if not the most important and valuable business assets you will have and you will ultimately spend more money in support if it than you will anywhere else (advertising, marketing, PR, branding, packaging, etc.). So you owe it to your business and yourself to make sure you handle this properly upfront and the first order of business always starts with a proper and comprehensive clearance. Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you start spending any money in support of it or submit an application to the USPTO. In the US, this means searching under both federal (USPTO) as well as common law because trademark rights stem from use in this country NOT registration. This means that acquiring a federal registration does not necessarily mean that you are not infringing on another's intellectual property. See the link below for a brief article from Fox News on the importance of the due diligence process and our guide on that process. I suggest that you consult with a lawyer in private and discuss your objectives 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. Best regards, Frank Natoli-Lapin, LLC

You do not have to wait. Trademark rights arise from use in commerce. While registration has many advantages in litigation and otherwise, it is not necessary before you send a cease and desist letter. But in all candor, you should not be sending the cease and desist letter. You should retain experienced IP litigation counsel to prepare and draft his for you. These letters must be prepared very carefully in accordance with many legal decisions over a long period of time. Further, when you use experienced, well-known attorneys to prepare your C&D letters, you are much more likely to be taken seriously. Note, however, that it is far from clear to me that this person in this other state has violated your rights. The problem you face is that he is operating in another state. Because your trademark has not been registered, your rights arise under common law. Generally speaking, common law trademark rights are limited to the geographic area in which the trademark owner has been operating---often limited to one or more states or local areas. Unless you can prove that you have been operating nationally and in the state where this new competitor operates, you could have a problem stopping him from using the trademark. Further, it will not be sufficient for you to show that you have been using the trademark on a web-site. You will need to show that your web-site has attracted customers or a following in the same state where this competitor is operating. Unless you can show that people within that state have been using your services, it will be very difficult to show that your common law trademark rights extend to that state. This is a good example of why it is so important to file for registered U.S. trademark protection at an early state of a business operation. Your next step is to retain experienced IP litigation counsel to make the best case possible to show infringement of your rights, and then to prepare a cease and desist letter if appropriate.