US Trademark question

[domaingenius]

Can anyone tell me if US trademarks are valid in the UK ?. I guess not but then we know that USA has long reach.

DG

[jberryhill]

Depends on what you are are asking.

A US federal registration is prima facie evidence of ownership and distinctiveness of the subject mark in the United States, its possessions and territories; provides constructive notice thereof; and entitles the owner to proceed in US federal court for infringement thereof.

If your question is "Can I be sued in a UK court on the basis of a US federal registration?" The answer, absent some contract enforcible in the UK, is no.

If your question is "Can I be sued in the US on the basis of a US federal registration, arising from activities conducted in the UK?" then the answer is going to depend on whether and how your UK activities affected US commerce - for example, are you attempting to export mislabeled goods into the US or otherwise making an effort to conduct commercial activity in the United States on the basis of your UK activities.

If your question is whether a US federal trademark filing can be used as a Paris or Madrid convention priority document in the UK trade marks office, the answer is it certainly can.

There are yet other ways of attempting to interpret your question, but it's not at all clear what you are trying to drive at.

[domaingenius]

John

Yes I was too vague there sorry. What I was meaning to ask is, can a party who have a US Trademark for ,as an example, "American Beef" use that trademark to claim that they have rights in "British Beef" in the UK ?. And I guess another question may be, can "thinking about" registering a name as a trademark establish any rights ?.

DG

[cyberlaw]

Standard disclaimer that "it depends," I would argue that it is extraordinarily unlikely, if not impossible, to take the mark "American Beef" and use it to assign rights to "British Beef" in the UK. What would stop the "American Beef" mark holder from assigning it to "Russian Beef," "Australian Beef," etc.?

"Thinking about" registering a trademark does not itself lead to any rights. However, if the party was already using it in commerce, thought about registering, but then did not, it would not preclude that party from showing its previous use in commerce.

Happy Holidays!

Eric M.
CyberLaw® P.C.
http://www.cyberlawonline.com

[Acro]

"Where's the beef?" seems to be a nice, generally applicable trademark

[jberryhill]

DG has the remarkable ability to clarify an ambiguous question into pure unintelligibility.

I went into vapor lock on the examples of "American Beef" and "British Beef". Eric is spot on there.

[Dave Zan]

What I was meaning to ask is, can a party who have a US Trademark for ,as an example, "American Beef" use that trademark to claim that they have rights in "British Beef" in the UK ?

Correct me if I'm wrong, but that trademark holder can't claim such in the UK
if: a) they're not "using" it there, and/or b) it's not listed in Madrid Protocol?

Whoops, forgot it's American and British Beef. Damn it, I need beef!

[domaingenius]

I think I better await the result from the Trademark office before I say anymore but thanks for all the input.

DG