how does trademark law work?

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sangr
Posts: 459
Joined: Sun Jun 07, 2009 4:45 pm

how does trademark law work?

Postby sangr » Sat Mar 10, 2012 9:48 am

so,

if there was a business in a foreign country

and they do business only in this foreign country. they never really open up shop in the US but register their name in the US. it expires.

and then a new company comes in and ends up takin that name and registers it after the old company lets it expire.

the company is retail and the name is an actual reference in real life (whether it be referring to the product, some aspect of culture, or historical figure, etc) and NOT some funky made up name.

they are in the same industry.

does company 1 or 2 have priority to the name in the US?

Younger Abstention
Posts: 335
Joined: Sun Dec 19, 2010 2:36 pm

Re: how does trademark law work?

Postby Younger Abstention » Sat Mar 10, 2012 1:36 pm

No. (1) No use in commerce (2) no assignment in gross.

sangr
Posts: 459
Joined: Sun Jun 07, 2009 4:45 pm

Re: how does trademark law work?

Postby sangr » Sat Mar 10, 2012 1:38 pm

I'm sorry, who do u mean no for?

I'm guessing company 1 does NOT have priority since they didn't set up shop? and number two I don't understand

thanks for the reply!

handsonthewheel
Posts: 182
Joined: Sat Feb 11, 2012 4:12 pm

Re: how does trademark law work?

Postby handsonthewheel » Sat Mar 10, 2012 3:02 pm

sangr wrote:I'm sorry, who do u mean no for?

I'm guessing company 1 does NOT have priority since they didn't set up shop? and number two I don't understand

thanks for the reply!


Company 2 has priority. First, the original registration has lapsed and there isn't anything preventing another company from using the same mark, so long as it doesn't cause consumer confusion. Second, even if the original registration was still being maintained, it is likely invalid for want of use in commerce in the U.S.

Younger Abstention's second comment, assignment in gross, isn't really pertinent on the facts. If the first company was trying to sell all rights to the use of the trademark, absent some additional transfers and continuity in use, it would be considered a an assignment in gross, which isn't valid.

The limited facts are straight forward. Depending on the context of the question, I assume there are more facts that would point to some specific part of a rule.




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