Conflict US and European trademark?

Question

If a trademark is registered as a local trademark in the US, and I have registered a similar trademark in a European country, do I run into problems later on if I sell my product in the US (it's a web-based service), even if my trademark is registered in another country?

If that is so, what can I do? I would like to avoid any legal trouble with the US trademark holder.

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Answers: 4 public & 0 private

Steven weinrieb
Patent Attorney

If there is a valid registered TM here in the US for the mark you are intending to use here in the US, yes, you would infringe that mark even though you have the mark registered in Europe. One avenue you might use is to approach the US TM holder/owner and either obtain a license to use the mark here in the US, OR, even better, ask the US TM owner/holder if he is interested in effectively cross-licensing the marks whereby you can freely use the mark here in the US and he can freely use the mark in Europe.

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