Under the US Trademark Law, a trademark can only be registrable in US if it has been used therein with respect to goods/services listed in the application. An exception for this principle is that the trademark filed for registration in US has been already registered in the home country.

Since the trademark “VNPT & Device” of VNPT has never been used in US, it can only be registrable in US when it has been prior registered in Vietnam. VNPT filed application for registration of the trademark “VNPT & Device” to the NOIP on 24 September 2002. Ordinary registration process takes 14 months, which means until November 2003 would this trademark be registered in Vietnam.

Meanwhile, on 28 June 2002, a US company (VITC, once was partner of VNPT, located in Illinois, USA) filed application with the United State Patent & Trademark Office (USPTO) for registration of two trademarks that were being used by VNPT at that time (trademarks "VNPT & wheel + lighting device" and "VNPT VIETNAM POST AND TELECOMMUNICATIONS CORP & wheel + lighting device"). Apart from the two trademarks of VNPT, VITC also filed applications to the USPTO for registration of other five trademarks such as: "VDC & Device", "VTI & Device", "VIETEL & Device" of VNPT subsidiary companies or other Vietnamese companies acting in the same field of post & telecommunications. After finding out the publication of these 07 applications on website of USPTO, LÊ & LÊ informed VNPT of the information.

On 31 October 2002, LÊ & LÊ was officially authorised by VNPT to represent VNPT in obtaning registrations of the trademark “VNPT & Device” in Vietnam and in US.

VITC – on the letter explaining its “favouring VNPT with this registration” – said they did this because “according to the US Law, VNPT cannot file application in US for copyright and trademark registration of such names as VNPT, VTI and VDC”. Lê & Lê explained to VNPT that this was not true when both Vietnam and US are parties to the Paris Convention for the Protection of Industrial Property and signed the bilateral agreement on copyrights protection (since 1998) and the US-Vietnam BTA (since 2001) the IP protection provisions of which mirror the TRIPS Agreement.

Therefore, in order for the trademark "VNPT & Device” to be registrable in US, Lê & Lê suggested that VNPT had to do two things simultaneously, namely: (i) forcing VITC assign or withdraw its trademark applications that had been filed to the USPTO; and (ii) successfully registering the trademark "VNPT & Device” in Vietnam, which would facilitate the registration process of this trademark in US. In addition, the registration in Vietnam had to be completed as soon as possible in order to avoid any further complicated and costly procedures if trademarks of VITC had been registered at the USPTO.

On 5 November 2002, Lê & Lê filed a request for express examination to the NOIP for the greatest benefit of VNPT in US. On 23 December 2002 (nearly 03 months from the filing date of 24 September 2002), the NOIP made Decision No. 5080/QĐ-ĐK on granting Registration Certificate No. 44590 of the trademark "VNPT & Device” in Vietnam

On 20 January 2003, VNPT sent VITC a letter drafted by Lê & Lê requesting VITC to withdraw two applications for registration of trademarks including the above-mentioned “VNPT” component. On 22 January 2003, VNPT filed trademark application for registration of "VNPT & Device” to the USPTO in respect of goods/services in 05 classes 09, 35, 36, 38 and 39, claiming priority of 24 September 2002 from the home.

On 7 July 2003, USPTO notified its intention of refusing VNPT’s trademark application for registration of "VNPT & Device” because this trademark is confusingly similar to the two prior filed trademarks under the name of VITC. In July and August 2003, under the relentless pressure of VNPT, VITC accepted to withdraw 07 applications for registration of the above-mentioned trademarks of the Vietnamese companies.

On 25 January 2005, USPTO granted Registration Certificate No. 2920357 for the trademark "VNPT & Device” in US in respect of goods/services in classes 09, 35, 36, 38 and 39.