- Manufactures and sells high-quality products worldwide.
- New products are patented, whenever possible, in the United States, and sold under a trademark registered with the Trademark Office in the United States.
- Client’s products are often knocked-off in lower-quality forms in foreign markets.
It was often difficult for client to predict countries in which product demand would justify securing patent rights. Furthermore, client’s products were not patentable in some commercially successful forms. However, the quality of client’s products provided competitive advantage in some markets although it was difficult to predict which countries. Client required intellectual property strategies which would allow it to exploit the quality advantage of its products in a large number of countries in which products might be commercially viable.
Client performed a comprehensive trademark search specific to the United States to identify federal trademark registrations, state trademark registrations, common law uses, and domain names for which client’s trademark was likely to cause confusion as to the source of the products sold by client. If no conflicts were identified with respect to the United States, then client performed trademark searches specific to the foreign countries where client would use its trademark.
If all searches did not identify uses and/or registrations that were likely to cause confusion as to the source of the products offered under client’s mark, then client prepared and filed a trademark application with the Trademark Office in the United States. Applicant then filed a trademark application under the Madrid Protocol to pursue trademark rights in the foreign countries where client’s products were to be sold to determine commercial viability.
While trademark registrations are no substitute for patents, client’s foreign trademark registrations permitted it to leverage the quality advantage of its products in a variety of foreign markets.