October, 31st, 2017

By Chelsea A. Russell

In the digital age, it is commonplace for consumers to be familiar with companies and products not for sale in their country. The internet has created a market in which companies can achieve substantial recognition of their trademarks in countries they do not actually sell their goods and services. It is this international connectivity that enables Korean-Americans to be familiar with SULBING, a chain of dessert cafés in Korea, without any locations in the United States. However, international recognition of a mark without any actual use in the United States will not be enough to bring an opposition proceeding on the grounds of likelihood of confusion against an applicant—the foreign mark owner must actually be using the trademark within the US. This requirement was recently affirmed by the TTAB in the precedential decision Sun Hee Jung v. Magic Snow, LLC, Oppo. No. 91226056 (September 20, 2017)[precedential]. Sun is a cautionary tale to foreign companies to strongly consider filing a US trademark application before expanding in the US because they cannot rely on foreign registrations and recognition in TTAB proceedings if the foreign mark has not yet been used in the United States.

The language in the Lanham Act Section 2(d) explicitly states that to bring an action for likelihood of confusion a party must be using their mark in the United States. 15 USC § 1052(d). In Sun, opposer Sun Hee Jung filed a trademark opposition proceeding against applicant Magic Snow, LLC, on the grounds that the applicant’s mark SUL BING led to a likelihood of confusion with its SULBING intent-to-use application, which was filed after applicant’s mark. Id at 2. Though Sun Hee Jung had not yet begun to use the mark in the United States, she claimed that the mark was well known to those familiar with Korea, such as Korean-Americans, who would be confused by the similarities between the marks. Id at 3. This recognition, she asserted, granted her priority over the applicant.

Sun Hee Jung’s claim is often referred to as the ‘well known mark’ doctrine, which in theory allows a well known markholder to assert their rights in the United States without a registration. However, as the Board noted in its decision, recognition is not equivalent to use of the mark in the United States and does not establish priority over an already pending trademark application in a likelihood of confusion claim. Id at 5. Without actual use of its mark in the United States, a foreign brand owner cannot oppose a prior trademark application it believes would lead to a likelihood of confusion.

The Board’s decision in Sun is a reminder to all foreign companies planning expansions into the US that the best protection against possible trademark infringement is to preemptively file a US trademark application. The type of US trademark application will vary based on the company’s international rights. For example, if relying on a foreign registration, a foreign company should file their mark on a Section 66a basis, which is an application based on the foreign rights of the trademark owner. If the foreign company does not yet have a foreign trademark registration, the company should file on both an intent-to-use basis (Section 1b), and foreign trademark basis (Section 44e). The 44e filing basis does not require that the foreign registration be submitted with the application, and thus, the company is given a cushion of time to obtain this registration first. If however, a foreign registration is not provided to the USPTO in time, the application will survive as an intent-to-use application and maintain its priority date.

To prevent issues that may arise during expansion into the US, WHIPgroup routinely advises its foreign clients to apply for US federal trademark registration as soon as they begin developing expansion plans, as detailed above. Filing a trademark application before the mark is in use in the US establishes a priority over other future applications for the same or similar trademarks. In Sun, the opposer had filed her trademark application a mere 15 days after the applicant, with no date of first use or other indication that the mark had been used in the US, and was thereby barred from bringing an action for likelihood of confusion. Id at 3-4. To avoid the same pitfalls as the opposer in Sun, foreign companies should apply for US trademark protection during the early stages of expansion and should not rely solely on their foreign trademark registrations and the reputation of their mark in the US. Though a brand’s trademark may be recognized in the US, this recognition will not be sufficient to protect the brand owner from trademark applications that are likely to confuse their customers when the brand is not yet being used in the US.

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

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