International brands are a part of the fabric of the United States marketplace. Some of the biggest brands in the US are owned by foreign companies, and, because of the sheer size of the market, new brand owners are always trying to find footholds in the United States for their products and services.
Despite having the same population as the state of Michigan, Sweden is home to some of the most well-known brands in the world. This means that goods and services from Swedish companies are constantly being imported into the United States. To protect these brands, many Swedish companies seek registration of a trademark in the United States.
Trademark Filings in the United States by Swedish Companies – Background & Data
|Year||Swedish TM Filings|
|*As of Aug. 2018|
In total, Swedish individuals and companies have filed over 24,000 trademarks in the United States (24,183). In the last five years alone, these individuals and companies have filed 5, 548 trademarks. That means that 23% of all trademarks filed by Swedish company ever, since the beginning of the U.S. trademark system, have been filed in the last five years.
One of the most well-known Swedish companies in the U.S. is pharmaceutical company AstraZeneca. They are responsible for an incredible 1144 filings in the United States, which accounts for almost 5% of every trademark filing ever made by Swedish companies in the U.S.
Electrolux is another Swedish company is significant brand awareness in the United States. It has filed 233 applications before the United States Patent and Trademark Office.
Many of Swedish companies like Ericsson and others have achieved strong brands in the U.S. (albeit through mergers and acquisitions, Ericsson’s ‘parent’ company is actually a Dutch company and, other than 4 trademarks still owned by the Swedish entity, are not included in the data above.)
A comment on methodology. These numbers represent the individuals and companies who list Sweden in either their address or the location of their business entity within the “owner” field of the USPTO’s database.
Applying for a US Trademark Using a Swedish Trademark Registration or Application
Of the ~1600 trademarks filed by Swedish companies since the beginning of 2017, over 1,000 are using a foreign registration as the basis for their U.S. applications, using the Madrid Protocol (Section 66 of the Lanham act, a treaty-based filing system) or the Paris Convention (Sections 44(d) and 44(e), a basis for application to use a foreign registration as the basis for the application).
When using the Madrid Protocol or the Paris Convention, one of the biggest issues is typically the identification of goods and services. Foreign applications typically allow for broad identifications of goods and services that, in some cases, barely relate to the actual product or service that the applicant plans to offer in the United States.
This causes delays in the registration process, as often times Examining Attorneys will need to go back and forth with the applicant several times to settle on a final identification. However, these broad identifications also create a different issue – applicant may find themselves compared to registered (or unregistered) marks that, in the marketplace, it never would have been compared to.
Applicant is a company selling automobile tires under the name Purple Bird Tires. Its European Union trademark registration is for tires and, broadly, automobiles. However, it also does advertising and marketing, so it includes “Marketing services; Advertising services.” It may one day have an app for its dealers, so it also includes “software.” It has promotional stickers and flyers, so it applies for stickers, pins, stationary and a variety of paper goods.
It files in the U.S. under the Paris Convention, using its EU registration as the basis and it files in all classes.
The examining attorney comes back with a long list of “Section 2(d) likelihood of confusion” refusals for various marks like “Purple Bird” for a wedding invitation company, “People Bird” for IT consulting, and “Purple Bird” a print shop.
While none of these companies have any relation to tires, or even the automobile industry, the application’s ID was so broad that it now has to spend time (and likely legal fees) removing goods and services. However, the examining attorneys are just that – attorneys. Once they have an impression about a mark, it can be difficult to “unring the bell” and applicant’s may have a hard time convincing the examining attorney to remove the refusals.
Even if the marks are accepted “as-is,” it increases the litigation risks and prosecution costs if another company monitoring the USPTO database see a mark that, based on the text of the application, overlaps with their own existing rights. An applicant may find itself subject to an enforcement letter against a company in a completely different industry.
Unique Issues in Using the Paris Convention to Apply for a US Trademark
Filing under the Paris Convention has its own set of unique issues. The U.S. application must match the foreign filing exactly when it comes to ownership and the mark itself. If the EU registraton is a color design, the U.S. application must be a color design. If the EU registration is owned by a holding company in Sweden, the U.S. application must be owned by that same holding company. Further, the goods and services on the U.S. application must be the same, or narrower, than the EU registration.
For example, if you apply for “retail store services featuring software” or “retail store services featuring snack foods” in the European Union, that registration will not allow you to register just “software” or “snack foods” in the U.S. Those goods would be outside of the scope of the retails services in the EU application.
Filing under the Madrid Protocol has its own issues as well. Under Madrid, there is the concept of “primary attack.” This means that if anything happens to the original “home” filing, it could invalidate the filings for extensions of protection elsewhere in the world, including the United States.
For both the Madrid Protocol and the Paris Convention, the standard for registration in the United States is that the applicant must have a “bona fide intent to use” the mark in the United States. A determination of whether an applicant has a bona fide intention to use the mark in commerce is an objective determination based on all the circumstances. There is no clear set of rules to demonstrate intent to use, but typically it includes business plans, outreach to manufacturers and U.S. distributors, discussions with potential licensees, and other tangible acts showing an intent to offer each of the products listed in the application.
This is usually a low standard, but the key is that the applicant must have a bona fide intent to use all goods and services in the application at the time the application is filed. If not, no future concrete business plans will remedy this and those goods and services (and potentially the entire application and resulting registration) is subject to cancellation. For a foreign company relying on a priority date established by a U.S. filing, this can greatly impact the brand scope in the U.S.
The Importance of Conducting a US Trademark Search for Swedish Companies
Another common mistake for Swedish businesses is the mistaken belief and registration in another part of the world means that registration is more likely in the United States. With the U.S. system of both registered and unregistered trademark rights (common-law rights) every trademark usage in the United States is subject to pre-existing rights, even if that trademark owner has never sought a federal registration.
Similarly, the standards for “likelihood of confusion” may be different then in Sweden and in the European Union. “Likelihood of confusion” features a complex set of factors weighed in their entirety to judge how likely the relevant consumer would be confused by the co-existence of two trademarks in the marketplace. This means that confusion can be likely even if the marks aren’t exactly similar. Instead, similarity is judged, in part, by similarity in sight, sound, meaning and overall commercial impression. An exact search of the name in Google or even the USPTO database will not be enough to gauge the legal risk of a trademark.
A comprehensive search performed by an experienced practitioner in the U.S. can help identify potential issues and counsel the trademark owner in the best strategy to move forward. That may mean narrowly tailoring the goods and services or, in some cases, using a different mark entirely.
There are many different things to consider as a Swedish company filing in the U.S. By hiring an experience trademark attorney, Swedish companies can help avoid common mistakes and delays.