TM Abandoned w UTPO - New Int WIPO TM extension

[protection1]

Background:

I duly registered my trademark ****** (distingt 7 letter word mark) in Denmark in 2000. I have used it ever since internationally for web based services (using the *******.com domain extension), including the USA.

In 2001 someone in Indiana USA started using the same trademark for a walk in shop concept in Indiana.

In August 2009 the Indiana entity filed for federal trademark of the mark in the USA.
In April 2010 this trademark application was abandoned, du to them not answering letters from USTPO.

In June 2010 i filed for an international extension of my mark to the USA through WIPO in Geneva. This is still in process and will reach USTPO soon.
This is based on my original 2000 trademark in Denmark.

In August 2010 the entity was however able to revive their original August 2009 application.



Ok,
My question is.
Who has the older and better in-date in this case?

Will they be able to use their original August 2009 in-date in their revived application? Or did they loose their in-date during the abandonment so that they will have to use their date of revival in August 2010 as their in-date?

Can I challenge the revival itself?

I filed my international extension through WIPO during the time their application was abandoned.
Did I get a better in-date by filing during their abandonment?


Thank you.

 

[Michael Wechsler]

This is a good question. I'm not sure since (a) you're dealing with a conflict of law issue, and (b) a question of usage requirements. They have been doing business in the US - have you done business in the US? Were they aware of your trademark and usage.

 

[protection1]

Hi lawprofessor,
Thanks.

Yes, there is the issue of my 2000 registration in Denmark.
I will have to prove my usage in the USA.

I was not aware of their usage until sometime in 2003, when I had already been using it for several years. The actual fact of the matter is that they must have copied me, as they used precicely the same font and color in the logo.


However I am hoping to find a clear solid answer to wether filing during another applications abandonment time gives a better in-date right. Or if the revival of the other application also revives the original application in-date of that application.

 

[Michael Wechsler]

This is a tough case. Without seeing everything it will be difficult to respond with a clear solid answer.

If you're certain they are using your distinct name to do the same here, you might want to file a notice of opposition to their trademark. If I recall correctly, they must affirm that they aren't aware of other usage and here it seems they would be, especially using a distinct name in the exact same business, etc.