Wednesday, August 15, 2007

Michael Froomkin on the Red Cross/Johnson & Johnson Trademark Suit

Prof. Michael Froomkin has a nice distillation of the Johnson & Johnson trademark infringement action against the Red Cross, including a handy timeline dating back more than a hundred years.

One thing that caught my eye was this quote:

Ironically, J&J’s original claim on the red cross design mark probably stems from a quirk in trademark law: at least before the most recent amendments, trademark law was strictly national. In other words, just because someone held rights to a mark abroad gave them no advantage in claiming rights over that mark here unless they actually used it here. As a result, it was pretty common for Americans to go abroad, see a nice trademark, come home and start an unrelated business using the mark, then win a lawsuit when the original foreign company tried to come into the US market.

Notwithstanding some exceptions, including the Benelux registration and the Community Trade Mark, trademark law is still very much national.

Article 4 of the Paris Convention allows for claims of priority based on foreign trademark filings, so long as the subsequent filings occur within six months of the original filing. But, generally, registering a mark in one country gives the owner no substantive rights in another country.

There are a few court decisions out there where an owner of a foreign trademark has been able to assert those rights in the United States, but this is by no means a settled area. There really is nothing stopping an American from going abroad and poaching a mark as Froomkin describes.

The lesson: Register early and often.

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