B & L was approached by US Incorporated Company (ABC) with regard to trademark registration and to address certain issues on Domain name dispute.
Parties Involved
US Incorporated Company - ABC
US Incorporated Company - XYZ
B&L worked for - US Incorporated Company ABC
Issues
Trademark registration, the trademark class and application which would be best suited the requirements of ABC, Statutory remedies available to obtain the trademark from illegal registrants (XYZ) and Domain name dispute resolution.
Theoretical Strategy by B&L
Detailed study and analysis of the Lanham Act, Rules and regulation prescribed by USPTO with regard to trademark registration, Anticybersquatting Consumer Protection Act, the applicability and practicality of the solutions offered by The Internet Corporation for Assigned Names and Numbers and Uniform Domain Name Dispute Resolution.
Operational Strategy by B&L
B&L's IP team was assigned to work on this. Conduct an initial study of the business model of ABC. Identify the possible hurdles in trademark registration and one such hurdle being a pending trademark application of XYZ. Analyze the law, rules and regulations governing the area of trademark registration and determine the legal recourse. Formulate legal strategy on the basis of the analysis so that the pending trademark application of XYZ is not considered a valid ground for the rejection of trademark application of ABC. Design and draft the trademark application for ABC. Advise ABC on the statutory remedies available and the legal recourse to be taken in order to solve an issue of domain name dispute.
Result
To summarize in a few words the strategies designed by B& L worked effectively and USPTO was left with no other option but to grant the trademark. ABC was successful in obtaining the trademark registration with USPTO.