July, 16th, 2024
Categories: Blog, News Tags: branding, litigation, trademark, TTAB, USPTO, whipgroup
Today, branding is everything – it is arguably one of the most important assets a company can have. So, whether you are starting a new brand or re-branding, any type of brand development should start with a GLOBAL trademark clearance search.
Recently, WHIPGroup filed a Notice of Opposition with the Trademark Trial and Appeal Board (“TTAB”) on behalf of its client Yepoda, a well-known European beauty and cosmetic brand.
To protect the good will of Yepoda’s trademarks, WHIPGroup opposed the mark, YEPPDA, which was almost identical to YEPODA.
After 40 days without an answer from YEPPDA, the opposition resulted in a default judgement and the YEPPDA trademark was abandoned.
While this was a step in the right direction for our client, it would not be the only U.S. trademark to potentially get in the way of obtaining U.S. trademark registration for YEPODA.
After deciding it was time to expand into the United States, Yepoda, filed a trademark application for “YEPODA.”
Shortly thereafter, the application was issued an Office Action, rejecting registration of the YEPODA mark because of its likelihood to be confused with the registered U.S. trademark for YEPIDA.
Because YEPIDA was only registered in the United States, when Yepoda conducted its original trademark clearance search did not discover the YEPIDA trademark because the clearance search was limited to the European Union.
However, with WHIPGroup’s help, Yepoda was able to file a petition to cancel the YEPIDA trademark with the TTAB.
Although the cancellation proceeding is still pending, this is a great example of why it is important to conduct global trademark clearance searches when developing a brand.
WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.
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