Discussion:
What is the name of your state? New York
We have a pending application for trademark. While it is pending application, we received a notice that there is another applicant for the same trademark in a foreign country (Uruguay) for the same international class. It was published recently.
Should we file an opposition to the application? Oyr deadline is December 2004.
Answer:
Is the foreign trademark holder trying to claim the TM in the U.S., and that's where you are overlapping, or are you trying to claim the TM in both the U.S. and foreign countries where the overlap occurs?
Should we file an opposition to the application? Oyr deadline is December 2004. I guess it depends on how bad you want the mark. The new Madrid rules are complicated, and it seems as if the foreign mark holders have something of an edge on U.S. applicants -- but if you want to use the mark, you'll need to file the opposition.
Answer:
New York
We just want to use the trademark in the US.
I was trying to find out if the other party is registering it here in the US (foreign applicant) or is just applying in his country (Uruguay).
What is the implication if he is filing for use in US and outside? What if only for use in Uruguay?
Answer:
What is the implication if he is filing for use in US and outside? If they have filed for U.S. protection before your filing, it will probably be tough for you to prevail, as the other party will have an earlier filing date. Further, as I noted above, a foreign filer may have some advantages over a U.S. filer -- however, in this case, if the Uruguay trademark is not already in existance in Uruguay, but is a new filing, then the foreign status of the applicant will give them no benefits over a U.S. applicant.
and if only for Uruguay? If the other party is only filing in Uruguay, or only filing in Uruguay plus some countries not including the U.S., then there shouldn't be any interference with the application for your U.S. mark. You can check with the USPTO to make sure, though.
Answer:
The only thing I would disagree on is the timing of two valid claims. Even if the Uruguay company is not filing for U.S. Protection and ONLY host country, a valid claim can be made if, in the future, they seek U.S. protection based on the fact that both claims are valid and the Uruguay claim was filed first.
Answer:
Even if the Uruguay company is not filing for U.S. Protection and ONLY host country, a valid claim can be made if, in the future, they seek U.S. protection based on the fact that both claims are valid and the Uruguay claim was filed first. True, but only if the claim is made within six months of the home country filing:
"A holder may claim a right of priority within the meaning of Article 4 of the Paris Convention if:
(1) The request for extension of protection contains a claim of priority;
(2) The request for extension of protection specifies the filing date, serial number and the country of the application that forms the basis for the claim of priority; and
(3) The date of international registration or the date of the recordal of the subsequent designation requesting an extension of protection to the United States is not later than 6 months after the date of the first regular national filing (within the meaning of Article 4(A)(3) of the Paris Convention) or a subsequent application (within the meaning of Article 4(C)(4) of the Paris Convention).
Section 67 of the Trademark Act, 15 U.S.C. §1141g; Madrid Protocol Article 4(2)."
Further, even if the Uruguay company could establish priority, they have to use the mark in commerce, in the U.S. -- they can't "squat" on the trademark
Answer:
Right ON!!!
Damn, it's more fun arguing with you Div
Answer:
I tried searching at the USPTO for the other party's registration or application and I could not find it. Does this mean that they are not applying for the trademark for use in the US?
Answer:
I tried searching at the USPTO for the other party's registration or application and I could not find it. Does this mean that they are not applying for the trademark for use in the US? No, it means at this time it's not on the website.
Answer:
No, it means at this time it's not on the website. That might be true, but the OP's assertion is more probably correct. If the Uruguay company were seeking U.S. protection, they have to go through U.S. prosecution, just like everyone else, and that means having the filing statuts and information be publically-available. They only have 6 months from FILING of their home-country mark to seek protection in the U.S. that claims the priority date of their home-country filing; after 6 months, their U.S. priority date is the date their filing reaches the USPTO from the International office.
OP, in all likelihood if there is no information on a corresponding U.S. app for the Uruguay company, it is unlikely that they have filed for U.S. protection. You only got notified because all of the Madrid signatory countries inform each other whenever a trademark goes through the International office.
But -- they always COULD file for U.S. protection, so you are not completely out of the woods until your mark actually gets registered...
Answer:
Should we just prioritize the registration of our TM in the US and not bother with filing an opposition with the Uruguay company?
I am learning a lot between the two of you. Phew!
Answer:
That decision depends on a host of questions, mainly, how much are you prepared to defend your trademark if there IS a pending application by the other company?
Unless you plan on doing business in Uruguay then I'd roll the dice and file in the U.S. and forget Uruguay since you'd lose there anyway.
Answer:
That was what I figured too,you know. Take my chance in pursuing our trademark registration here and will just cross the bridge when the other party files a US application. We will not be doing business in Uruguay anyway.
Answer:
Although BB's answer is most likely the best course of action, you can also contact the USPTO to get advice directly from them, and find out whether or not the Uruguay company has an application pending in the U.S.
"Office employees will gladly answer questions about the procedures for obtaining and maintaining a registration. For general information, callers may telephone the Trademark Assistance Center at (703) 308-9000 or (800) 786-9199. See TMEP §108.03."
You might also want to skim through the guide for the Madrid protocol to understand how international trademark filing works in practice:
Answer:
Or go to Washington youself. That way you can see our show in person.
DIVA and the Drag Queen