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[bill]

I see that a mark I have applied for is used by a company that is based abroad and whose activity is abroad but claims to have customers in the US and has a website which can be viewed in the US where a use of the mark is displayed.

This company also has a US subsidiary, which looks to me like nothing more than a mailing address. Interestingly, the subsidiary does not use the mark on its separate web page.

Would any of these factors mitigate the claim on the part of this company to have been first to use the mark in the US?

Thanks a lot

[JSonnabend]

You'll need to look into sections 44(d) and 44(e), which provide bases for claiming U.S. trademark rights based on foreign applications and registrations.  Long story short is that the company you describe very well may have substantial domestice trademark rights.

- Jeff

[bill]

Thank-you.

Suppose the company is using the mark on a common-law basis. Wouldn't that limit the reach of its right to where, geographically, the mark has been established?

On a related point, I find it amazing that a website, which is, admittedly, accessible worldwide, could constitute a worldwide presence with respect to evaluating the reach of a trademark.

Our two companies are not the same (our missions are not the same), nor do we produce exactly the same products (what I would be up against is their claim that, one day, they might want to produce products confusingly similar to the my products), and they do no sell anything here in the US (US companies buy products from them that are made to order on their premises abroad).

Should I wait and see, or is there something I can do now, during the application process, to differentiate my use of the mark from theirs?

I appreciate your help.

[JSonnabend]

You raise many good points, and your understanding of the law appears generally correct.

The PTO will only search for registered marks pending applications, not for common law uses, when examining your application.  Beyond that,  I would not discuss the details of your situation and legal theories here.

- Jeff