Written by: Lawrence A. Maxham
August 2020
Here is yet another reason to file your trademarks early, in every country in which you are now or likely will within the next ten years, be doing business.
The following is a cautionary tale of timing in filing a trademark. Many countries have a “first-to-file” law that recognizes the first person to file for a trademark as having rights that are superior to later applicants of conflicting marks. >
The FACEBOOK trademarks have been lost in China. Dr. Su filed first. Dr. Su had filed to register the trademark “FACEBOOK” on 19 May 2006. Then Facebook, Inc., filed an application for the mark “FACEBOOK” on 20 November 2007. However, it was determined that since Dr. Su was first to file, the mark was granted to him. Facebook, Inc., battled him in China for 11 years and, ultimately, did not win.
Even though the facts would seem to establish Dr. Su as a trademark squatter (see our article “China Gets Serious About Its Trademark System” here), the Chinese court did not deem him to be such a trademark owner, even though he had also filed to register the marks of a few multi-billion dollar Indian companies. The court was not persuaded by the low “squatter” numbers (not by the relative importance of the marks).
This case highlights the importance of filing immediately. Even if you are not yet selling in interstate or foreign commerce, you should file an application as soon as possible. The example here happens to relate to China, but the “first-to-file” law applies in most countries. If you file to register your trademark at some “convenient” time after you start shipping products or services to a country, or when “you get around to it,” you may find yourself locked out of that country. Or you may have to pay a lot of money to get your rights back to your own trademark.
Do you have more questions about registering your trademark, intent-to-use, or trademark infringement? Call us 760-975-3843 or e-mail us today and we’ll be happy to set up a consultation with you to discuss your next steps.
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