Bad Faith Trademark Filings & Oppositions
One of the benefits of having a law firm act as your correspondence address is the ability to screen incoming third party communications. Previously, we've discussed fraudulent solicitations which attempt to mimic the USPTO and obtain so-called-fees from applicants and registrants. Another category of third party solicitation is related to bad faith filings.
A bad faith filing is one in which an applicant files a mark with goods which are similar to an established mark. The motivations for which are varied but are generally not associated with the genuine desire for honest competition. Instead, filings categorized as "bad faith" are usually done to interfere dishonestly with genuine markets. There are generally two types of bad faith filings: free ride and squatting.
Free Ride
Having a trademark is different than growing the value of a trademark by building up the associated reputation. As any established business can tell you, building a reputation takes time, money, and energy. It's no surprise that there are those who seek to avoid the work associated with the marketing required to build that reputation. New competitors sometimes seek to profit from an established trademark owner's reputation (knock-offs). Other times, a disgruntled employee or licensee with a prior relationship to the established trademark owner will seek to continue using the mark without authorization (license violation).
Squatters
In this case, the applicant is filing for a mark similar to the established trademark owner not because the seek to actually continually use the mark in commerce, but instead, to do only enough to get the registration certificate. Usually this is seen only in a countries which are foreign with respect to the established trademark owner. This prevents the trademark owner from entering the market in that additional country, with the intention of selling the trademark application back to the trademark owner when the owner attempts to enter that market. In this case, the filing by the applicant is intended to result not in commerce but in a monetary settlement. Timely oppositions can be filed to prevent these bad faith filing from becoming established in that foreign market. However, judicious care should be used in choosing whether or not to pursue such an opposition in a foreign country. Unless the country is one in which you intend to pursue commerce, it may not be necessary to file. That is, even if a similar mark were granted registration in another country, the established trademark owner still has the right to prevent sales within the originating country, regardless--so long as the maintenance filings are made.
If you have any questions about protecting your trademark rights internationally, feel free to give our office a call. We would be happy to discuss this with you at your convenience.
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Patent Attorney, Sarita Pickett, November 23, 2021.
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