Are You Going To File Patents And Trademarks In Europe?
That’s what Clocktower Law is going to ask from now on when foreign filing deadlines are approaching. Rather than asking generally about filing foreign patents and trademarks, we’re going to ask specifically about filing in Europe.
We believe that it is easier for people to generalize from the specific rather than specify from the general. For example, we have told the story of an invention that allows cans of pet food to be resealed. From this specific example, you can easily think of other uses for this invention. (I read this example in some book but don’t recall which one.)
Similarly, if we ask you about filing in Europe, then you will probably think of other places you might want to file. Here are some stats to help you decide.
- 12% of our patent clients file foreign patents.
- 96% of those foreign patents are filed in six “countries” (Europe, Japan, India, Canada, Australia, China).
- 12% of our trademark clients file foreign trademarks.
- 74% of those foreign trademarks are filed in six “countries” (Europe, Canada, Australia, China, Japan, India).
Of course, “foreign” depends on your perspective, and we often refer to “US” patents and trademarks vs. “non-US” patents and trademarks. Because everyone is a foreigner to the majority of the world’s residents. Can’t we all just get along?
Trademark tips that should fit snugly on the screen of your favorite device (cough, iPhone, cough).
What should you do if a competitor has filed a trademark very similar to yours? You basically have several bad options:
Option 1 – Do nothing. Hope they forget to file something (such as a Statement of Use) with the USPTO, go away, and/or go out of business. Issues: free, but outcome uncertain.
Option 2 – Convince them to file an Express Abandonment of their trademark application (http://teas.uspto.gov/rea/) and re-brand. Issues: less expensive, but hard to convince them to do so.
Option 3 – If their trademark has not yet been examined, then file a Letter of Protest with the USPTO (http://www.uspto.gov/trademark/trademark-updates-and-announcements/letter-protest-practice-tip). If their trademark has been published, then file a Request for Extension of Time to File an Opposition (https://www.youtube.com/watch?v=RIvngyjFFdY). Issues: Letters of Protest can sometimes derail a bad trademark application, but Opposition proceedings have all of the issues of Cancellation proceedings (see below).
Option 4 – If the 30-day publication period has passed, then wait until they get a registered trademark and then file a Petition to Cancel. Issues: moderately expensive and takes a long time (probably $30K and 30 months), but outcome pretty certain (you win).
Option 5 – Litigate. Send them a C&D letter, be prepared to litigate in your market or theirs (if they file a Declaratory Judgment action). Issues: most expensive, most time consuming, but outcome pretty certain (you win).
Option 6 – Blog about the situation and let the matter play out in the court of public opinion. But be careful what you say so that you don’t find yourself on the receiving end of a defamation lawsuit! Issues: fun but risky.
Come to think of it, “Fun But Risky” would make a pretty good band name. You’re welcome.