Monday, August 18, 2008

Heavner and Luepke Review "The Top Fifteen Mistakes of Foreign Applicants"

In the latest issue of The Trademark Reporter, B. Brett Heavner and Marcus H.H. Luepke present an informative discussion of the "15 most common mistakes" made by foreign applicants, offering "practical solutions for avoiding these pitfalls." All this in their article, Avoiding Trademark Pitfalls in the "Land of the Unlimited Possibilities": The Top Fifteen Mistakes of Foreign Applicants in the U.S. Trademark Office.

As one might expect, the fundamental difference between our use-based system and foreign registration-based systems leads to several of the pitfalls, including inadequate searching by some foreign applicants (who ignore common law marks), overly-broad identifications of goods and services, and vulnerability to attacks based on fraud or lack of bona fide intent.

In the TTAB realm, foreign applicants, according to the authors, may be unprepared for oppositions, cancellations, and infringement litigation. Not surprisingly, the requirement to providing discovery may be particularly annoying to those not familiar to with U.S. litigation practice.

Heavner and Luepke recommend that foreign applicants consult with U.S. trademark counsel to ensure that these 15 pitfalls may be side-stepped. It's hard to argue with that proposition.

[A thank you to The Trademark Reporter for granting permission to provide a link to the this article. Copyright © 2008 the International Trademark Association, and reprinted with permission from The Trademark Reporter®, 98 TMR 974 (July-August 2008).]

Text Copyright John L. Welch 2008.


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