My client has chain of laundries in Russia. For some reason it is called German Marka.
He wants to register this TM in US. (business will stay in Russia. His goal is "U.S. registration can be used as a basis to obtain registration (and protection) in foreign countries.")
In doing so, can he register this word "German" in US?
Precisely in full version: "German Marka"? Possible?
Intellectual Property Law Attorney
Back up -- Trademarks are not registered. Trademark RIGHTS, however, can be registered if a person uses a word, slogan, logo, or whathaveyou in commerce to brand a particular product or service. Absent such an existing right there's literally nothing to register -- and no one can even apply to register trademark rights they have no intention of creating in the future. So tell your Russian client that the ONLY way it can develop trademark rights in the United States is start doing business in the United States under its "German Marka" trademark. First, however, a trademark attorney will have to "clear the rights" to that phrase to make sure that its use by your Russian client will not infringe someone else's already-existing U.S. trademark rights. There is a mechanism to apply to register a mark on an "intent to use" basis but that requires that the putative trademark user ACTUALLY have written evidence of a good faith intent to use the mark in the United States before it files its application. I suggest that you punt all of these issues off to competent trademark counsel. Good luck.
The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
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Intellectual Property Law Attorney
No, not without use in the USA. The Russian laundry chain can file the application in the US based on a Russian trademark, but will be required to prove use in US commerce before the registration will be issued. If your client has a business presence in the US, that may qualify. So, as a practical matter, the easy solution is that your client needs to advertise in the US, for example to potential tourists and needs to offer laundry services to US businesses or citizens. For example, the client might offer business prepaid laundry services for their employees traveling to Russia.
You and/or your client should refer the matter to an experienced IP attorney who has international experience and a pro-active approach. You might use a free initial consultation to assess that attorney and let the attorney assess you and your client to see if the relationship is one that would be mutually beneficial and accomplish the goals your client desires. If you are an attorney, you will likely want an IP specialist so as to not put your other legal business with the client at risk. I have given this warning to many a general practitioner only to see them ignore it and refer to a "one-stop shop" firm and end up losing the client to that firm. Big firms have powerful business development skills aimed in part at doing just that.
I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.
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My colleagues offered good insights. I want to address your concern about foreign rights. Registration in the US would not grant or extend rights to any other country. that business would have to apply for protection in those countries and there are a number of ways of doing this. For example, you can use the Madrid Protocol system, but this can only accessed in a member states registry where the mark was first registered. For example, if the mark is already registered in Russia, they will need to use the Russian IP registry to access the Madrid Protocol filing system for international registrations. Other options include the European Community system (one filing for all 27 member states) or of course going to each country's registry directly. the choice depends on what they want to accomplish exactly.
As noted, use in the US is a requirement for registration and while you can file here as an "intent to use" you have a limited time to demonstrate use before the mark is abandoned by the USPTO.
Whenever you endeavor into investing in a trademark it is very important that you conduct the proper clearance due diligence upfront and before you 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 detailed explanation of the due diligence process.
As for whether his mark will be accepted for registration by the USPTO depends on a number of things and would be a good question for your trademark lawyer to discuss in more detail.
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.
DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed with the law firm of Natoli-Lapin, LLC on the basis of this posting.
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