Is My U.S. Trademark Registration Protected Internationally?

A trademark registered in the U.S. will only protect you in trademark disputes that arise within the United States. The protections provided by a United States trademark will not apply to trademark issues outside the U.S. In order to receive trademark protections internationally, you must register your trademark in other countries.

A U.S. Trademark does not Protect You in Other Countries

A trademark registered in the United States offers valuable protections for your business.  Your registered trademark will provide the presumption of nationwide validity, which means you’ll be protected from potential infringement anywhere throughout the United States.  Unfortunately, any trademark disputes that arise outside the U.S. will not be covered by these protections.  In order to gain trademark protections outside the United States, you must register your trademark in other countries.

In today’s global economy, it’s not too farfetched to assume that a business of any size may one day reach other countries.  This is especially true of online retailers, who may sell goods outside the United States, and even businesses manufacturing goods overseas.  Whether you plan market your brand to customers in Europe or make your products in China, international trademarks can be a valuable asset to your business, and often necessary to your success outside the United States.

Relying only on your U.S. trademark for trademark protection could have costly consequences.  Many businesses work to grow a successful brand within the United States, only to learn later that they have no ability to control their brand’s reputation overseas.  According to the U.S. Chamber of Commerce, counterfeiting is a multi-billion dollar industry, with much of the fraud taking place in China and Hong Kong.  If you learn that your trademark is being used without your permission in these countries, you will have little recourse without a registered trademark.  With a registered trademark, however, you have the legal right to fight infringement in these countries.

A U.S. Trademark can be a Springboard to International Registration

While a trademark registered in the United States won’t protect you in other countries, it is often the first step in establishing those protections.  Prior to filing your trademark application, however, create an international trademark plan to determine which countries you’ll need to register your mark.  Consider where you are currently doing business, and where you plan to do business in the future.  Work with an experienced trademark attorney to decide which international registration make sense for your business plans and needs.

Once you’ve filed your home country trademark application with the United States Patent and Trademark Office, or USPTO, you should begin to file your application in the countries you plan to do business.  If your international applications are submitted within six months of your U.S. application, your U.S. priority date can be used.  This means that anyone looking to file a similar mark in that country after the priority date may not be approved.

Business owners and individuals filing international trademark applications have two options, once their home country application has been filed.  The first is to file directly with each country’s trademark office.  For businesses that plan to file in only a handful of countries, this might be the best option for you.  However, if you plan to register your trademark in multiple countries, you may want to use the Madrid Protocol.  This is an international treaty that allows applicants to submit one application, in their home language, that can then be applied to over 90 member countries.  The Madrid Protocol does not guarantee that your trademark will be approved in each country you file, but rather it streamlines the application process.  The decision to approve or reject your trademark application will still be made on a country-by-country basis.

Register Internationally to be Protected Outside the United States

Obtaining a federally registered trademark in the United States should be one of the first priorities of U.S. business owners.  While the protections provided by a U.S. registered trademark are extremely valuable to business owners, they do not apply to trademark issues in other countries.  In order to protect your business from infringement internationally, you must register your trademark in other countries.  Work with your trademark attorney to determine which international trademarks make sense for your business, and once your U.S. application has been filed, begin the process to register internationally, by either filing directly with each country’s trademark office or utilizing the Madrid Protocol.  Contact an experienced trademark attorney today to learn more about international trademark registration.

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 8,000 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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