The Lanham Act is a federal law that governs the registration and enforcement of trademarks and service marks in the United States, including the registration of trademarks in the United States based on foreign registrations. In particular, Section 44 of the Lanham Act governs the manner in which a foreign registration can be used to obtain a valid registration in the United States for the same mark. One of the critical aspects of Section 44, more specifically Section 44(e), is the requirement that an applicant for registration of a foreign mark in the United States must prove that it is, at the time of filing the U.S. application or at the time that the Section 44(e) basis for filing is added to the application or at the time of the issuance of a U.S. registration, the owner of a valid registration from the applicant’s country of origin. This requirement recently proved to be fatal to a British company’s U.S. registration for BEARWW for Internet based social networking and introduction services, based on a Canadian trademark registration and registered under Section 44(e). The U.S. application was originally filed by, and a registration issued to, Canadian citizen, Marie Laure Leclerq. The registration was assigned to Webid Consulting Ltd. on June 1, 2012.
In that matter (SARL Corexco v. Webid Consulting Ltd., Cancellation No. 92056456 (TTAB 2014)), French company, SARL Corexco (“Corexco”), filed an action for cancellation before the U.S. Trademark Trial and Appeal Board (“Board”) against U.S. Registration No. 4,148,217 for the mark BEARWW . At the time of the cancellation proceeding, the registration was owned by Webid Consulting Ltd. (“Webid”), a United Kingdom corporation. Corexco based the cancellation on two arguments: (1) that the trademark “BEARWW” is likely to cause confusion with Corexco’s prior use of the mark BEARWWW in association with online social networking services and (2) that the registration, which was based on the Canadian registration for the mark BEARWW and registered pursuant to Section 44(e), was void ab initio as having a defective basis for registration.
After some discovery in the proceeding, Corexco filed a motion for summary judgment. Although the Board refused to grant summary judgment on the issue of likelihood of confusion, it did order cancellation of Webid’s registration of the trademark on the basis of Corexco’s other stated ground. In particular, the Board noted that, at the time the BEARWW trademark was registered, the original registrant, Canadian citizen, Marie Laure Leclerq, did not concurrently own the Canadian registration upon which the U.S. application was based and upon which it registered. During the course of formal discovery in the case, Webid admitted Ms. Leclerq never owned the Canadian registration. Indeed, on the date that the Section 44(e) basis for filing was added to the application, namely, August 11, 2011, Webid, and not Ms. Leclerq, was the registered owner of the Canadian registration. And while Ms. Leclerq did eventually assign the American trademark registration to Webid on June 1, 2012, the Board held the assignment to be of no consequence. Ms. Leclerq neither owned the Canadian mark at the time of registration of the U.S. application, nor any time before. Thus, the application was defective under the Lanham Act because Ms. Leclerq did not own the Canadian registration, at any of the critical dates, the filing date, the date that the Section 44(e) was added as a basis for registration, or the registration date of the U.S. application. Since there were no other facts to prove ownership of the foreign registration at any of the crucial times, the Board granted Corexco’s motion for summary judgment and ordered the cancellation of the registration.
This case demonstrates the imperative that individuals and other entities seeking a U.S. registration based on a foreign registration must strictly comply with the rules governing domestic federal registration of foreign marks. It also underscores the importance of relying on experienced and knowledgeable counsel, suitably familiar with trademark law, to obtain registration of such marks.
This article is not intended to be, nor should it be considered to be, legal advice.
Attorney Anna M. Vradenburgh counsels and represents clients facing trademark, copyright, patent and other intellectual property issues, providing expert advice regarding intellectual property protection, exploitation and rights enforcement.
Ms. Vradenburgh can be contacted as follows:
The Eclipse Group
6345 Balboa Blvd, Suite 325,
Encino, California 91316