A European technology company had spent years building brand equity in its home market. When it entered the United States, it discovered that a Delaware LLC (a limited liability company incorporated under Delaware corporate legislation) had already registered a confusingly similar mark covering overlapping goods. Every month of inaction meant deeper entrenchment by the conflicting mark – and a shrinking window for cost-effective enforcement.
Cross-border trademark enforcement in the United States requires a structured combination of federal IP registration, opposition proceedings before the USPTO, and – where infringement is active – litigation before a US District Court. The process typically spans twelve to thirty months depending on whether the matter resolves through negotiated coexistence or proceeds to a contested hearing. The strength of the underlying trademark application and the quality of evidence assembled from the outset largely determine which path becomes viable.
This case study traces how Ferraz & Whitmore handled the matter from initial assessment through to resolution, and draws out the transferable lessons for international clients confronting similar IP conflicts in the United States.
Client profile and the challenge encountered
The client was a mid-sized European software company. It had operated under its brand for over a decade and held registered marks across multiple EU jurisdictions. Entering the US market through a newly formed subsidiary, it initiated a trademark application covering its core software services under the relevant Nice classification (the international system for classifying goods and services in trademark applications).
The USPTO examiner identified a prior registration held by the Delaware LLC. That registration covered a nearly identical word mark in the same Nice classification class. The prior owner had been using the mark in US commerce for several years. Its online presence was modest, but its registration was valid and enforceable.
The risk was concrete. Without resolution, the client faced refusal of its US trademark application. It also risked an infringement claim from the prior registrant if it continued trading under its established brand. Two commercially unacceptable outcomes sat at the end of the same track.
Our full-service approach to intellectual property matters in the United States covers precisely this intersection of IP registration and active brand enforcement.
Legal strategy: rationale and sequencing
The team began with a comprehensive clearance and validity analysis. The prior mark's registration history was reviewed for any gaps in use, maintenance filings, or procedural irregularities. Under US intellectual property legislation, a registered mark can be challenged on the grounds of non-use within a defined period. The review identified a plausible vulnerability in the prior owner's evidence of use across the full breadth of services claimed.
Rather than initiating opposition proceedings immediately, the team elected a two-track approach. The first track was a direct negotiation with the prior registrant, led by a commercial framing: the two companies operated in non-overlapping geographic and customer segments. A coexistence agreement – with defined territorial and channel limits – was commercially rational for both parties. The second track was preparation of a cancellation petition to be filed if negotiations failed, targeting the non-use vulnerability identified during analysis.
Parallel to both tracks, the client's US trademark application was amended to narrow its description of services. This reduced the surface area of conflict and strengthened the argument that confusion between the marks was unlikely in the marketplace.
The AAA arbitration rules and JAMS arbitration procedures were assessed as potential dispute resolution mechanisms if the matter could not be resolved through direct negotiation but neither party wished to pursue full federal court litigation. A contractual arbitration clause was proposed as part of the coexistence agreement draft.
For clients whose brand disputes involve technology or AI-related classifications, our AI and technology law practice in the United States addresses the additional complexity of emerging-category goods and services under IP registration frameworks.
Key milestones and complications encountered
Negotiations opened within six weeks of the initial assessment. The prior registrant was initially resistant. Its counsel raised the strength of federal registration as a bar to any coexistence arrangement. This was the first significant complication: the other side's negotiating position was anchored to the presumption of validity that attaches to a registered mark under US intellectual property legislation.
The team responded by disclosing – without prematurely committing to filing – the non-use analysis. This shifted the negotiating dynamic considerably. The prior registrant's counsel requested time to conduct its own internal use audit. That audit took approximately eight weeks.
A second complication arose from the client's corporate structure. The US subsidiary was newly formed, and establishing standing to pursue cancellation proceedings required careful documentation of the parent entity's rights and the subsidiary's authorised use. This is a non-obvious procedural requirement that catches many international clients without prior US trademark experience.
The matter resolved through a negotiated coexistence agreement approximately seven months after initial instructions. The client's trademark application proceeded without further opposition. The agreed coexistence terms included channel restrictions, geographic notices, and a mutual undertaking not to challenge each other's existing marks. An arbitration clause – referencing AAA arbitration rules – was included for any future disputes under the agreement.
A parallel case involving similar cross-border IP enforcement dynamics in a different jurisdiction is examined in our case study on trademark disputes in Brazil.
Three transferable lessons
Lesson one: Non-use vulnerability is an asset – but only if identified early. Under US intellectual property legislation, a registered mark that has not been used in commerce for a continuous period can be challenged. This vulnerability does not appear on the face of the registration. It requires active investigation of the prior owner's commercial activity. International clients who skip this step proceed to negotiation – or litigation – without their strongest piece of leverage.
Lesson two: Corporate structure affects standing. A foreign parent company entering the US through a newly formed subsidiary must establish the legal connection between the parent's brand rights and the subsidiary's authority to enforce them. This is a procedural point that can delay or complicate both opposition proceedings and cancellation petitions if not addressed at the outset. SEC registration considerations and the Delaware LLC's corporate documentation were relevant to confirming the opposing party's identity and capacity throughout this matter.
Lesson three: Coexistence agreements need enforcement teeth. Many negotiated trademark coexistence arrangements are drafted too broadly to be enforceable. Effective agreements define permitted and prohibited uses with precision, include monitoring obligations, and – critically – specify a dispute resolution mechanism. Referencing JAMS or AAA arbitration rules within the agreement converts a soft commitment into a structured process. Parties who omit this step often find themselves back in dispute within two to three years.
To explore legal options for trademark enforcement and IP registration in the United States, schedule a consultation at info@ferrazwhitmore.com.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our intellectual property practice covers trademark registration, opposition proceedings, infringement claims, and cross-border enforcement in both civil law and common law systems, including before the US District Court and through JAMS and AAA arbitration. The firm's Lisbon base provides direct access to EU regulatory frameworks, while our common law expertise supports enforcement strategies in English-speaking jurisdictions including the United States. Our attorneys have advised on IP registration and enforcement matters spanning both the Nice classification system and US-specific federal IP legislation. As a law firm serving clients across the United States and Europe, we work with international entrepreneurs, technology companies, and in-house legal teams who need results-oriented counsel across multiple legal systems. For a preliminary review of your trademark situation in the United States, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.