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Author Topic: Registration in the US of a renowned trademark registered in another country  (Read 558 times)

yeskiweb

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I know that there are three main methods by which an applicant may apply for a federal registration on the Principal Register.

1. Filing an application based on actual use.
2. Filing an application based on an intent to use.
3. Filing an application based on a priority right based, in turn, on an application in another country. (Paris convention)

Regarding this last method there are certain requirements. Primarily the application has to be presented at the USPTO in the 6 months following the application made in the other country.

So, to my question: If I have a trademark registration -not application- in another country. And it has been registered for a lot longer than 6 months is there any way I could still claim the priority right?

What if it was a renowned or famous trademark? (In the country where it is registered, not necessarily in the U.S.)

What would be the case if it were famous in the US? 

Well it turned out to be a bit more than just one question but I will really appreciate all your help.

:)


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JSonnabend

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You can register under 44(e).  I don't think the fame of the mark has anything to do with the registration, at least not based on the information you've given.

- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com

yeskiweb

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Thank you Jeff. Didn't think it would either...
Could you answer something else for me.

Would there be any advantages if I registered under 44(e) as oposed to doingo so under lets say Section 1(b).
Bone fide would still need to be proved in both instances. ¿Am I right?
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yeskiweb

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*I meant bona fide.
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JSonnabend

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Nothing to "prove" really, except that you must have a genuine intent to use the mark.  That doesn't mean you actually will ever use the mark or that your plans won't change.  It's a very low standard, really.

If you look, you will see many applications that claim multiple bases, including combinations of 44(e) and 1(b).

- Jeff
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SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com
 



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