Is My US Trademark Registration Valid Outside the US?
Taking the important step to protect your company's brand or brands by filing a US trademark application to attain federal registration is a great strategy. However, once you have attained your US trademark, what happens when your business grows, and you start using your trademarks to sell the same products or services in another country? That is a common question that our firm is asked all the time. With the advent of the internet and e-commerce, the world is a smaller and interconnected place. However, trademark registration is still very much linked to the jurisdiction of the registration. This article will try to answer the question and provide the details to help business owners know their options when it comes to expansion to a new jurisdiction or country.
US Trademark Protection is Territorial
If you have successfully completed the application process at the USPTO, you have attained a federal (US) registration for your trademark. That registration extends across the entire United States and has primacy and priority within the United States. This means that a US federal trademark registration is only valid and enforceable within the United States. Thus, if you start expanding to sell goods or offer services in another country, your US trademark registration does not provide you with automatic rights in that country.
For example, if your business expands to Canada, Europe, or Asia, your US-registered trademark does not prevent competitors in those regions from using a similar or identical mark, unless you secure protection in those specific markets.
Whats more, other countries or jurisdictions may have dramatically differing rules or laws. For instance, while the US generally is a "first to use" jurisdiction (ie. trademark rights are based on first use in commerce, and you have to prove actual use before your application attains a registration), other countries are a "first to file" jurisdiction. This means that in some other countries, one does not even need to prove trademark use before obtaining a registration.
How to Protect Your Trademark Internationally
First of all, you have to understand there is no such thing as a "global" trademark registration. Each country or jurisdiction has its own laws and rules pertaining to the use and protection of trademarks within that jurisdiction, as well as its own organ or registry that keeps track of protected trademark registrations.
To ensure your brand remains protected when expanding internationally, you will need to register your trademark in other countries. Fortunately, there are processes in place to help make this easier:
1. File Through the Madrid Protocol
The first option is to use your existing US application or federal registration as the basis for seeking the same protection in another country.
The Madrid Protocol provides a centralized international trademark filing system. With one application, you can seek registration of your trademark in over 100 member countries, including Canada, the European Union, China, Japan, and Australia.
The process begins by submitting an international application through the USPTO, designating the countries where you wish to extend your US-based protection. Each jurisdiction evaluates your application according to its legal requirements, which means acceptance is not guaranteed.
Obviously, the first step you need to undertake is a determination of whether the country or countries you wish to seek registration in are members of the treaty. While, generally speaking, extension through the Madrid System is more cost-effective than applying directly in each country, it is subject to "central attack." If (during 5 years) your US base registration fails for whatever reason, ALL the foreign registrations that were established by extension of that US registration will also fail.
2. Seek Direct Registration in Individual Countries
Alternatively, you can apply for trademark registration directly in each country where you want protection. This approach might be necessary if a country is not a member of the Madrid Protocol. For example, certain nations in Africa and the Middle East require localized trademark applications.
Using this method, you will need to employ local counsel and follow the local laws. While this method may be more onerous and costly from one perspective, it will mean that any resulting trademark registrations are not dependent on one another and, thus, are not vulnerable to "central attack."
3. European Union Trademark (EUTM)
If your business plans to expand operations or sell products across Europe, a European Union Trademark (EUTM) can cover all EU member states with one application. This centralized system can save significant time and effort compared to filing in individual countries.
Unlike the US - the European Union only takes a few months to process and examine trademark applications.
Notably, Norway, the UK and Switzerland are not part of the EUTM.
4. Benelux Office for Intellectual Property (BOIP)
A regional jurisdiction registry comprised of the Benelux countries (The Netherlands, Luxembourg, and Belgium) is known for being even quicker in acting on a trademark application. Unlike other jurisdictions where it takes in excess of a year, or the EU where it takes a few months, the BOIP typically renders decisions within days or weeks of the application.
Why International Trademark Protection Matters
Failing to secure international trademark registration can lead to significant risks, including:
- Brand Dilution: Without trademark protection, competitors in other countries may use your brand name or logo, weakening your brand identity.
- Lost Revenue: Another entity could use your trademark to profit from your reputation in new markets.
- Legal Challenges: You may face potential lawsuits or roadblocks if an existing trademark holder in your target country opposes your usage.
Being proactive and protecting your trademark internationally ensures your rights are secure, allowing you to build your business with confidence.
For more information on the Madrid System or filing directly in domestic jurisdictions - see our previous blog article on this topic! (https://www.iveticlaw.com/options-on-how-to-extend-your-trademark-protection-to-other-countries)
Final Food for Thought
Your US federal trademark registration provides robust protection of your trademark rights within the United States. However, this protection does not extend beyond the borders of the United States automatically - rather you need to undertake certain steps. Expanding your trademark registration's protection beyond the United States can be an important and critical part of safeguarding your business as you expand to new markets. Yet, the process can be confusing, and difficult to understand and discern.
It is always therefore a good idea to consult with an experienced trademark attorney when planning any such expansion of your trademark rights. Though our office is based in Chicago, we regularly assist trademark clients across the United States (and even those based internationally). As such, we have knowledge and experience that can assist you in determining what steps are appropriate and feasible for your business needs and budget. Think of us as your experienced trademark attorney capable of guiding you on your international trademark journey.
Need help protecting your trademark internationally? Then contact our law firm to seek a free initial consultation to see if our services are a good fit for your needs - no matter where your business expansion takes you.
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