Asked almost 3 years ago - Beaverton, ORFlag
My company is based in Germany, I sell to the US. My website, marketing and sales efforts target the US only. I do not have my trademark (company name or logo) registered in the US, my rights are based on common law use.
A company from a non-WIPO-country is getting exactly this name registered in the US. They are selling the exact same products.
Another European company has registered this mark in Europe and I have the opportunity to enter into an licencing agreement which would give me exclusive rights.
Would this licensing agreement help me in any way with protecting my rights in the US?
How is 'first use in commerce' in common law defined? Would the first (and possibly only) invoice to a US customer establish priority? Or when a website targeting the US goes online
Q: Another European company has registered this mark in Europe and I have the opportunity to enter into an licencing agreement which would give me exclusive rights. Would this licensing agreement help me in any way with protecting my rights in the US?
There's an internationally agreed-upon trademark registration process that, in effect, backdates an application to register a mark in Country Two to the date the mark owner applied for registration in Country One [so long as both countries signed onto the Madrid Protocol] or to the date the mark owner was actually issued a registration in Country One [so long as both countries signed onto the Madrid Agreement and Madrid Protocol]. This "priority date" claim made in a registration application in Country Two must be made within six months of the relevant happening [the filing of the application or the issuance of the registration] in Country One.
Under this process, however, ONLY the mark owner -- not you as a licensee -- may apply to register the mark in the U.S.
So ... IF the relevant six month period has not yet lapsed and the European mark owner wants to file for an extension of protection in the U.S. it may do so. Your use of the mark in the U.S. as the mark owner's licensee is sufficient "use in commerce" for the U.S.-issued registration to be granted.
There are two open, fundamental issues however.
First, the other company who's trying to register the mark that you're already using in the U.S. is the "junior user" of the mark. The general rule is that only the senior user of a mark is entitled to register the mark. Once this other company's registration application reaches the "opposition" period, you can initiate an opposition proceeding and argue that registration should be denied because you already have common law rights in the mark. In fact, you should seriously consider filing your own U.S. application for registration now [in consultation with a US-licensed trademark attorney] so that your application is already teed up once the other company's registration is denied.
Second, I am unclear on what you would licensing from the European company that's using the mark in Europe. Because YOU are using the mark in the U.S. and the European company is not only YOU have the right to use the mark in the U.S. You don't need a license to do what you already have the right to do.
You need to hire a U.S.licensed trademark attorney. Good luck.
The general facts are:
"based in Germany, I sell to the US. My website, marketing and sales efforts target the US only."
"A company from a non-WIPO-country is getting exactly this name registered in the US. They are selling the exact same products. "
Your use of your logo or word marks, to the extent they are not generic, may have generated common law trademark status for you and your company as the source of the goods and services offered. If the mark is descriptive, you may have developed secondary meaning in the relevant market, such that you may have common law trademark rights. Your common law rights depend on many factors.
Your question states the other company may be registering exactly the same mark for the same products in the US. This does not provide enough information to gauge what type of registration is involved and whether it is a word mark or word plus design. It also does not account for any claim of priority for the use of the mark.
You will need to engage a trademark attorney to review the particulars of your case. You may have an opportunity to oppose the putative registration of the other company. The trademark attorney can also deal with your question concerning licenses and whether this is going to benefit you in any way.
"Use in commerce" is more than just the first sale. There must be meaningful market penetration. Depending on the type of goods or services, the extent of advertising, the recognition in the market, the channels of trade involved, one sale may be enough, Websites are an important market channel and how ane when traffic is generated may indicate some degree of market acceptance and recognition, but it is but one aspect of the main question, whether the mark is identifies you as the source for the goods or services.
This answer can not be considerred or relied upon as legal advice or creating any attorney client relationship and is provided for purposes of illustrating general ideas that may or may not be applicable once all of the facts of the particular circumstances of the limited question asked are considered. Because the totality of the facts have not been disclosed or considered, no one should rely on the general statements and observations.
Before undertaking or not undertaking any course of action , a formal attorney client relationship is needed with a trusted counselor, experienced in the particular subject matter and licensed in the relevant state or jurisdiction..
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