Foreign trademark registration by a distributor

International Trademarks: A Foreign Company’s Rights in the USA

4 stars based on 62 reviews

A company located outside of the United States — as an example, a company located in one of the European countries — may spend thousands of dollars developing its brand and goodwill in its home country. Eventually, such company may want to sell its goods and services outside of its home country including in the United States. The Madrid Protocol provides an easy means for the company to make its initial trademark filing in the United States.

At foreign trademark registration by a distributor point, a foreign company in Europe recently contacted me for legal counsel.

When the company located outside of the United States considers protecting its trademark which is foreign trademark registration by a distributor in connection with its goods and services sold into the United States, one option for making the U. Approximately 95 countries are members of the Madrid Protocol, and such filing option is available to parties in the member countries. Canada is not a member of the Madrid Protocol.

As an alternative approach to the Madrid Protocol, the foreign company foreign trademark registration by a distributor file in each country separately. The company located outside the United States will have already filed for trademark protection in its home country. It will then file an international application via its foreign trademark registration by a distributor intellectual property office selecting the member countries for which it seeks trademark registration.

This application is processed via the World Intellectual Property Organization and then forwarded to the selected member countries, in our example, the United States. Once the trademark application is received by the applicable intellectual property office of the member country, in our foreign trademark registration by a distributor, the USPTO, the Examiner reviews the trademark application for compliance with the laws of that member country.

The USPTO Examiner can refuse registration on the basis that the proposed mark would cause a likelihood of confusion with another United States mark, whether registered or pending registration. The USPTO Examiner will also likely require that the description of the goods and services be redrafted and narrowed because some foreign countries allow much broader descriptions of goods and services.

In some cases, the descriptions are quite broad and it is prudent to simply delete one of the many classes being applied for. Such third parties could also oppose the proposed registration for many of the same reasons that an Examiner may refuse registration, such as a likelihood of confusion. The United States company can rely on rights under a trademark registration and even rights under common law for an unregistered mark. In addition, a United States company with a similar mark and related goods and services may send a trademark cease and desist letter to the foreign company.

If the foreign company sells its products and services via a distributor channel, then the cease and desist letter may be sent to the United States distributor. The distributor will not have the desire, and many times not have the financial means, to appropriately respond to such cease and desist letter. A well-crafted response to the cease and desist letter foreign trademark registration by a distributor critical to resolving the dispute.

In conclusion, a company can use the Madrid Protocol to easily file for trademark registration in multiple member countries beyond its home country. However, once the Examiner at the local intellectual property office reviews the application, issues will likely be raised that will require a response with winning legal arguments to achieve registration.

The services of a trademark attorney in the applicable member country, in our case, the United States, should be retained to prepare and file such response. His practice is focused primarily on business, technology and intellectual property law. He can be reached at and VPeros PerosLaw.

The reader should not rely on this article in making business, legal or other decisions on any matter without first consulting an attorney regarding any such decision or undertaking. Ready to Get Started?

Deanonymization of clients in bitcoin p2p networking

Litecoin coingecko gbp
Give me coins litecoin exchange rate

Liquid paper dry line correction film msds diesel

Buyer s best friend bitcoin stock price

Blockchain revolution pdf download
Exmouth market ec1 map
Can you mine dogecoin with asic

Bitcoin online wallet github pages

18 comments

Hire the top litecoin mining bot freelancers

Btc litecoin

The party who is the owner of a trademark must file the trademark application. If the applicant does not own the mark on the date the application is filed, the trademark application is void 37 C.

In other words, this defect cannot be cured by amendment or assignment. An applicant can rely on use by a related company. Reliance on use by a related company is acceptable as long as 1 the mark is used in connection with the same goods and services identified in the registration; 2 the applicant maintains control over the quality of the goods or services; 3 and if there is exclusive use only by the related company, then this fact must be disclosed in the trademark application 37 C.

With this in mind, it is critical to determine who the owner of the trademark is prior to filing the trademark application. If there is a dispute between a manufacturer and a distributor, the manufacturer is presumed to be the owner, absent an agreement between the parties. However, this is a rebuttable presumption.

The following factors will be reviewed to determine proper ownership: If the applicant is the U. The written documents do not have to be filed with the USPTO, but should be maintained by the applicant in case the examining attorney requests the documents.

Either an individual or an entity may own a trademark that is used by a wholly related company. If the related party consists of a wholly owned company of the applicant, then either the parent corporation or a subsidiary corporation may be the proper applicant. In other words, the USPTO will accept an application from either the parent or wholly owned subsidiary and will presume that this is the intention of the parties as to ownership.

However, once the trademark application is filed, the only way to change ownership is through assignment.

Unless the record or specimen contradicts the claim of ownership made by the applicant, the examining attorney will not inquire about the relationship between the applicant and other parties named on the application. We have learned through experience that you must use caution when responding to an examiner's inquiry regarding ownership.

If ownership is questioned, an applicant should start by submitting a simple statement such as, "the Applicant controls use of the mark and the quality of the goods or services" assuming this statement is accurate. If you have questions concerning trademark ownership or which party should file the trademark application, please contact our office for a courtesy consultation.

The Law Offices of Joseph C. We serve the following localities: Justia Law Firm Website Design.

boxnohako.xsrv.jp