Does my U.S. trademark registration protect me in other countries?

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Trademark rights are determined on a country by country basis.  As such, your registration in the U.S. will not protect your trademark rights in the EU, Canada, etc.  Furthermore, simply using your trademark in another country doesn’t necessarily mean you have rights to the mark there.  More often than not, foreign registrations are required to protect your mark abroad.

Most countries in the world are “first to file” countries.  No evidence of use is required before a registration can issue.  Quite simply, the first applicant to apply for a mark is the first to registration.  (Take, for example, the recent iPad dispute in China.)  Trademark rights in the U.S. are developed on a “first to use” basis.  You can’t obtain a registration for a trademark in the United States until that mark is moving its product or service through interstate commerce.  However, unlike the U.S., you may not be able to enforce your trademark rights in other countries absent a government issued registration for the mark.  

Upon hearing this news, many brand owners shudder and ask, “Does that mean I have to get a trademark registration in every country I want to use my mark?”  No, not necessarily.  For example, the EU has agreements in place which allow a brand owner to file one application to obtain a registration covering the entire EU.  Other regions throughout the world provide similar multi-country filing structures.  Also, those entities with a commercial presence in the U.S. can utilize a filing system known as the Madrid Protocol, which allows the brand owner’s U.S. counsel to file applications throughout the world based on the applicant’s original U.S. filing.  This can result in a significant costs savings to the brand owner.  

Developing your international IP portfolio can be a complex task for a brand owner.  Though DIY legal work can be tempting for a startup business, international trademark filing is not something that should be undertaken by a non-lawyer.  Compare it to, say, remodeling your bathroom.  With enough time, money, and patience, you might be able to do it right.  But, how will you know if you’re doing it wrong?  Probably not until you realize you forgot to seal your bathtub and you’ve now got a wading pool instead of a nicely tiled (dry!) floor.*

Questions?  Feel free to call or email me at ashley@emberip.com

 

*Not based on personal experience.  I’m the daughter of a plumber.   My father would disown me if I engaged in such shenanigans.

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