Case Study: Registering Trade Marks Abroad
One of our clients is a fast-growing fashion brand. They approached our team for help with resolving a trade mark registration issue in the US.
The client wanted to expand to the US market in advance of an upcoming investment round. However, their branding was already highly similar to a pre-existing trade mark in the US. Therefore, their trade mark application, and expansion plans, hit a stumbling block.
Such was the size of the issue that one law firm had advised it could not be overcome, and the client should consider a change of name.
But having already built up a huge brand following in the UK, this was not a viable option. They asked us to find a solution.
And so, whilst the client pushed on with their expansion plans, which resulted in an infringement claim, we looked for trade marks on the US register with a high level of similarity to the existing mark. We found a suitable mark, and purchased it on behalf of our client.
We were then able to use this mark as leverage in the infringement claim. Through a tense mediation process, we were able to resolve the claim out of court – something that may not have been possible without the purchase of the similar mark.