This summer Boshnjakovski Law Office reached and tackled its greatest challenge in the implementation of a global trademark registration strategy – settling a dispute in front of the United States Patent and Trademark Office (USPTO).
As we have been reporting on our website in the past, we have been engaged by a client to develop and execute a global trademark registration strategy. The brand protected by the trademark is a software product applicable in the healthcare industry. We have already successfully registered the trademark in the EU and New Zealand.
This September we can another important victory in this process by successfully registering the trademark in the United States of America. However, this time we faced the biggest challenge in our global trademark registration efforts so far. The issue was that one major US corporation with an already protected trademark challenged our right to register our trademark by initiating a dispute in front of the United States Patent and Trademark Office (USPTO). However, on our initiative a settlement was reached, which ensured that both our client and the opponent had their rights and interests protected.
The first challenge was to convince the owner of an already registered trademark that the products sold under our client’s brand do not represent a competitive risk for them. Namely, although both companies market their software products under their respective and similar brands, the software is used for completely different purposes. While our client’s trademark is used to market software product applicable in the healthcare industry, the opposing side’s software product is used in the field of sports.
Once we had managed to reach an understanding regarding that key issue, it was time to draft a written settlement that will work out the details of our understanding. This means that our client promised and guaranteed that it will restrict trademark’s usage to marketing a software product applicable in the healthcare industry, with an explicit exclusion of the trademark usage in the field of sports. On the other hand, the opposing side promised to withdraw the objection that started the dispute in front of the USPTO and refrain from further disputes or objections in the USA or any other state in which they operate, as long as our client respects its promises and guarantees. The settlement is by now implemented fully.
This opened the way to registration of the trademark in the United States. In the coming months we expect a successful registration of the trademark in Canada. This should facilitate our client’s move to expand into North America in a way that gives them confidence not only that their intellectual property is protected, but also that they are not infringing any third party’s IP.
We firmly believe that the true wealth of the contemporary world is not in material resources, but in proven brands, creative ideas and knowledge. With this in mind we will continue assisting our clients to protect their valuable intellectual property – copyrights, trademarks, designs and patents.
For advice on how to register and protect your intellectual property, feel free to write (contact@boshnjakovski.com) or call (+38970257879).
