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[sblake]

I've been selling "Pink Bananas" via several (my own) web sites and my company named "XYZ Company" (US based company).
With great demand and popularity of the "Pink Bananas" product and with "XYZ" company name being too generic I'd formed company  called  "Pink Bananas Company", registered domains pinkbananascompany,com and pinkbananas,com.
Recently I've found out that a foreign company had filed trademarks for "PinkBananas PinkBananas Company" and "Pink Bananas".
USPTO initially denied those trademarks due to the fact that  "PinkBananas" is a common term.
The foreign company name is similar to mine "The PinkBananas Company Limited" vs my "PinkBananas Company".
The trademarks are for the following names:  "PinkBananas" and " PinkBananas PinkBananas Company" (yes, there is duplicate word)

After initial denial by USPTO this application was revived with the following changes:

They are now applying for classification that covers "pinkbananas",
but disclaim the sole use of "pinkbananas" in both trademarks
They are company named "The PinkBananas Company Limited" that sell "pinkbananas" - no other products.

Currently they are not marketing products in US.
I've been selling this product in US for over 8 years via web sites with trademark (TM) claims.
Web sites are listed #1 in Google,Yahoo, MSN search for both product name and company name clearly indicating US presence.
How could USPTO attorneys ignore this ??
Can any foreign company trademark US company's name with "intent to sell"

I'd missed the "opposition" window. Currently other companies are opposing those trademarks.
Oppositions are for different classifications that are of no interest to me.

This company had applied for trademarks in their country at the same time and was recently awarded trademarks.
They are not applying for the Madrid protocol

("Pink Bananas" and all company names are not real. Used for demonstration purpose only)>

What is the best route to resolve this ?. Trademarks are not registered as of now.

[JSonnabend]

Wow, that was confusing.

If "pink bananas" is the generic name of the product at issue, then neither of you can claim trademark rights to it.  You can't have an automobile brand called "Car", for example.

With that in mind, I'm not sure what's been disclaimed.  You're essentially free to use whatever the disclaimed portion is, but you won't be able to claim trademark rights in that portion any more than the registrant could.

Beyond that, I'm not sure I followed the hypo.

- Jeff

[sblake]

My issue is with USPTO approving those trademarks for the foreign company that is NOT selling this product in US and can technically put me out of business since this trademark bares my company's name full name i.e. pinkbananas company.


How can company selling "pinkbananas" disclaim
"pinkbananas" and be awarded trademark for this keaword with other classifications ?.