On 1 Apr 99 at 20:34, Greg Broiles wrote:
> A popular misconception about trademark rights is the assumption
> that they're created by the filing of a trademark application.
> That's not correct. Trademarks are created and maintained when
> someone (who can be a person or other form of legal person, like a
> partnership or a corporation) uses a mark in connection with
> commerce in goods or services to identify the unique source of those
> goods or services. It is the use in commerce - not the registration
> - which creates the trademark rights. Registration grants a
> trademark holder extra rights and privileges - and puts other
> parties on notice that a trademark is claimed, so they can't later
> say they didn't know - but registration alone does not create
> trademark rights.
While this may well be true for the U.S. and other Common Law
countries it should not be overlooked that things are different in
other parts of the world. For example, in Germany and other
EU Member States trade mark rights can be obtained _by registration_.
However, there are certain circumstances causing the loss of the
trade mark after registration. Proper use in commerce is required at
least after the lapse of a grace period of five years starting with
registration date. Moreover, a trade mark might lose its original
distinctiveness if all world uses the mark in a purely descriptive
sense over years without any intervention by the registrant. There
are other legal circumstances under which trade mark rights can
become open for cancellation after successfull registration.
In order to find out whether or not RSADSI has any trade mark right
on "RSA" e.g. in Europe a search would have to be conducted on the
basis of all national trademark registers of the EU Member States,
the Community Trade Mark Register maintained by the OHIM in Alicante,
Spain, and last not least the International Register of IR marks
maintained by the WIPO.
If RSADSI should indeed have any valid registration for "RSA" which
has not lapsed yet e.g. due non-renewal or so then they would prima
facie have a monopoly to use "RSA" in commercial contexts for the
goods and/or services as registered with regard to the respective
territories.
Of course, the acronym "RSA" has been used for many years throughout
textbooks and articles in a purely descriptive sense. Hence, if some
legal conflict with RSADSI would come up it would be a good idea to
check on the basis of applicable law whether or not they have
effectively lost their trade mark right on "RSA" due to these
circumstances. I would see some chances for a cancellation action at
least for Germany, but this is a non-trivial matter the chances of
which would have to be assessed carefully.
I merely would like to point out that trade mark law is a rather
complicated issue in particular when treated on a global scale,
taking into account that the legal situation outside the U.S. may
well be substantially different. It would be risky to assume that
RSADSI can't sue you in Europe if they would be unable to do so in
the U.S.
Regards,
Axel H Horns
Patentanwalt
