Trademarks - Seizing The Trademark

Our client, a Canadian food company, makes products there and in the U.S. that it sells under its brands in both countries and in Europe. They created a new brand that they thought was a perfect fit for one of their new products and asked us to obtain a U.S. federal trademark registration. Our research uncovered that another company had registered the brand three years earlier and it was therefore unavailable for our client. The client said they had strong feelings about the brand and asked us to see if it was available for purchase.

We investigated and discovered the brand owner had committed a fraud on the U.S. Patent and Trademark office by claiming it had used the brand in interstate commerce when it had not. Confirming these crucial facts included investigation by our firm's attorneys as well as hiring professional detectives to uncover facts otherwise not available. Once we were confident of our position, we filed a trademark registration on behalf of our client which (as we expected) the U.S. Patent and Trademark Office said could not be granted because of the existence of the other registration which we knew was fraudulent. We then filed an action to cancel the fraudulent trademark. Next we contacted the fraudulent trademark owner, told them what we knew, and offered a nominal sum to sell us their dubious rights so our Canadian client's trademark registration could be approved. Our adversary "doubled down," by committing more fraud and claiming they had further sales that actually did not exist. We told them their choices were simple: They could sell to us cheaply or spend a lot of money on attorneys fees to lose the cancellation action we filed and then have nothing.

After a short while, our adversaries knew we had them boxed in without hope of escape and sold us their rights for a tiny amount. The client was very happy because we able to execute the entire strategy in six months.


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