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Wow... I couldn't have imagined a more difficult question to ask then global IP and trademark law. So I'll try to help. The first question is: Is the offendin
by jesusmichael 13y ago
Wow... I couldn't have imagined a more difficult question to ask then global IP and trademark law.
So I'll try to help.
The first question is: Is the offending party in the same business as you?
The goal of the law in dealing with trademarks is: "Will it cause confusion in the marketplace?" and "Is one party trying to benefit from the goodwill of the other party?"
Those are the tests that a US court will apply to your case.
If they are in the same business as you are. I would send them a notification letter of your use of the mark. Not a Cease and Desist.
If you are in the UK you don't need to file a challenge to the USPTO, just a notice to the UK IP Office. Its the job of the petitioner at the USPTO to do a global search.
In the end you can keep operating up until they sue you. They'd have to sue you in a UK court, which may be cost prohibitive for them... and at which point you'll have the evidence to show your use of the mark for the last 6 years and your notice to them of your use of it.
Hope that helps...
- supermatt 13y agoMany thanks for your feedback! Its just what I was hoping to hear. I will ensure to send them a letter by registered mail tomorrow morning.
- jesusmichael 13y agoOh... one thing I should mention is that if the do attempt to bar you from using the mark in the future. Make an offer to sell them your rights to the mark before going to court. You have ample evidence of your use and they may have a tough going. Everything is evidence.. your website, business cards, your client list, etc. You might want to run a small ad in a publication that is delivered outside of the UK to give yourself international presence. Just a thought... I'm not a lawyer but I did go to law school and international IP was one of my favorite classes.