[E-trademarks] When the full search shows a mark on product that might or might not be shipped into the U.S.

[Kevin Grierson]

I would say it depends on your client’s risk tolerance.

Based on what you’ve said, there doesn’t appear to be any direct evidence that the third parties’ goods are actually shipped into the US, though they potentially could be, and those parties (I am guessing) have not filed for a TM registration here.  Also, the marks are not identical. So it would seem, based on the facts presented, that your client can file an application in good faith in the US.  The question then is whether the client is willing to take the risk of a challenge by one of those third parties.

If that application was challenged based on prior use of an arguably confusingly similar mark, I think such an opposition would turn on the details of sales, if any, into the US.  I confess I’m not up to speed on what kind of use would constitute use in US commerce that would entitle a foreign third party to priority.  If, for example, the third-party web site was based in the UK and sales to the US were de minimus, would that count?  Would it make a difference if it was a .co.uk site and all the prices were in pounds?  I don’t know.

Kevin Grierson​​​​
CULHANE|MEADOWS PLLC<http://www.culhanemeadows.com/>
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  757-726-7799<tel:757-726-7799>
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  866-521-5663<fax:866-521-5663>
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  kgrierson at cm.law<mailto:kgrierson at cm.law>

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Jessica R. Friedman via E-trademarks
Sent: Friday, November 10, 2023 11:55 AM
To: e-trademarks at oppedahl-lists.com
Cc: Jessica R. Friedman <jrfriedman at litproplaw.com>
Subject: [E-trademarks] When the full search shows a mark on product that might or might not be shipped into the U.S.

EXTERNAL EMAIL
I’m reviewing a full search for mark [JESSIE] for [pens and pencils]. The search report turned up some links to sites of foreign companies that show JESSI (NO “E”) used on a single pencil product, manufactured by X. It looks like I can order that pencil on one of those foreign sites and get it shipped to the U.S. I can’t find this product online anywhere except on those few foreign sites.

Do these facts give rise to any inference that X is using JESSI in the U.S. for pencils?

More to the point, should I advise my client that she cannot use or apply to register JESSIE in the U.S. for pencils?

Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com/>

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