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Whether to Cancel National Trademark Registrations in Favor of a CTM

By Matthew W. Siegal and Stephen A. Fefferman

Why maintain national trademark registrations in Europe? Your biggest client, the hypothetical Copsi-Cola, Inc., a U.S. beverage manufacturer, with a 95-year-old U.S. trademark registration for the popular POWERSWEET drink, a high-sugar soda, is attempting to expand its trademark rights in the European market and needs your advice. Copsi-Cola has also owned registrations in three of the 15 European Union (“EU”) member countries for more than 50 years: France, Spain and Portugal. Copsi-Cola has begun market research in advance of selling its POWERSWEET drink in five more EU member countries, including the United Kingdom, Germany and the Benelux countries, and has asked you to file applications in the national trademark offices in those countries. Copsi-Cola also wants the option of using its mark in all EU member countries.

After filing the applications, Copsi-Cola asks you if it would be better off abandoning its pending individual country applications, some of which it could not maintain because of lack of use, and file one community trademark (“CTM”) application. Among the benefits Copsi-Cola seeks is a uniform right in the mark throughout the EU based on use in only one country, which it can already establish. Copsi-Cola also has an interest in lowering the costs in applying for, renewing and maintaining its POWERSWEET and other registrations by having a single European registration. Copsi-Cola has indicated that it wants you to abandon its current European applications and registrations and file one CTM application. You realize that this decision requires careful consideration.

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