May 28, 2015

MEERKAT: Life On Air’s Trademark Boon or Bain?

by Guest Blogger

20150306181650 Meerkat

Tuesday, Phandroid reported that LG Electronics had applied to register MEERKAT in the U.S. for "IP camera; Closed-Circuit Television (CCTV) Cameras; Cameras for surveillance; Photographic apparatus and instruments; Cameras; Webcams; Mobile phones; Smart phones; Application software for smart phones; Application software for smart phone cameras."

Phandroid speculates that this could indicate that LG Electronics plans to buy MEERKAT. Out of curiosity, I looked at the application and noticed that it was filed in the U.S. with both 1B and a 44D designations. The 1B designation means that it was filed in the U.S. with an intent to use the mark in commerce. By contrast, the 44D means that it was originally filed outside the U.S. and is afforded the same priority filing date in the U.S. as an international application for the same mark. So, I looked some more.

It turns out that LG Electronics filed for MEERKAT in South Korea (4020150033140) on May 6, 2015. Then on May 20, 2015, LG filed for the mark throughout the European Union using a CTM application (014103253) and in the U.S.(86/635,939).

What really surprised me is that the actual company that currently owns the MEERKAT app (Life On Air, Inc.) does not appear to own any trademark applications or registrations for this mark!

In the U.S., trademarks arise based on actual use of a trademark as a designation for goods or services, but common law rights only extend to the localities where the trademark is used. A trademark owner acquires rights in a particular location on the date the owner starts using the mark in that location. By filing a federal application to register in the U.S based on an intent to use a mark, upon registration and use of the mark in commerce, the applicant obtains trademark rights throughout the United States as of the filing date.

While it may be likely that LG Electronics is preparing to acquire MEERKAT, if it does not, then an interesting thing is about to happen:

If the LG Electronics U.S. application registers, then Life On Air's trademark rights would be limited to the locations in the U.S. where Life On Air was using the MEERKAT mark on the filing date.

LG Electronics' rights in the U.S. would be limited to all of the geographic locations where Life On Air was not using the MEERKAT mark on the application filing date.

In order to prevent the LG Electronics marks from registering (assuming there are no other confusingly similar registered trademarks that prevent registration), Life On Air may be forced to file an Opposition proceeding to object to registration of LG Electronics' MEERKAT application.

In order to determine the places where Life On Air has prior rights, Life On Air may be forced to file a Concurrent Use Application and initiate a Concurrent Use Proceeding to determine which company has rights in different geographic locations in the U.S.

Life On Air will likely face similar difficulties in the European Union and Korea.

Hopefully, LG Electronics is acquiring Life On Air. If not, Life On Air has an expensive road ahead in trying to sort out its trademark rights. Trademark applications themselves are relatively inexpensive, especially compared to litigation. It can be financially devastating to a company to fight over trademark rights in the absence of a U.S. registration. An added bonus is that one a mark is registered, the USPTO will actively screen new applications and reject them if they are confusingly similar to you registered trademark.

Consider whether you have adequately protected your trademarks, and if not save yourself some headache down the road. If Life On Air had registered its MEERKAT marks, there would be much less uncertainty because it would be unlikely that the LG Electronics marks would survive the USPTO review process before being rejected.

Again, hopefully, Life On Air is working out the details of walking off into the sunset with cash in hand from LG Electronics. One thing is for sure: LG Electronics has some pretty big international plans for the MEERKAT trademark.