Re: If I know of a Party outside the USA using a TM can I register it? ?

Subject: Re: Re: If I know of a Party outside the USA using a TM can I register it? ?

Comments:
: : My father founded *** in 1983 in South Africa. We have been using our trademark in South Africa, although unregistered, since 1983. : : We have used it in the US in 1986 and then through a joint venture in 1988 in the USA again. : : The JV ended and the agreements, including the license to use the mark terminated in 1990/91. : : Both parties carried on with the business and the party in the US registered the Trademarks even though he did not own them and the license to use had terminated. : : In 1998 a legal battle started and now the question is : Who owns the TM? : : We had first use in the USA, 1986, then again through the JV until 1990/91. We also traded in the US in 1995 and the other party was aware of it but did not do anything. : : We believe the other party had to notify the USPTO that someone else also had rights to the mark. In fact they never owned it and thus could not register it. : : I think the question I need answered is : If I were in a JV and the JV ended could I carry on with the business in the USA using the TM knowing that someone else was also using the TM? When registering the mark did I have to state that I was aware of someone else having rights in a mark or that someone else was the author of the mark or that they had preiviously to the JV used the mark? : Dear Adrian Evans, : An analysis of the facts is complex. There may be also a question of statutory incontestability. There is one case where someone saw a trademark in Italy, adopted it in the US. The court held that the American prevailed since there was no intent by the Italians to use the mark in the US at the time the mark was adopted by the American, despite a Treaty the American prevailed. : M. Arthur Auslander : Auslander & Thomas-Intellectual Property Law Since 1909 : 505 Eighth Avenue, New York, NY 10018 : 212-594-6900, fax 212-244-0028, aus@auslander.com : ELAINE's Workshop (sm) : E arly L egal A dvice I s N ot E xpensive

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