Why Foreign Companies Should Register a Trademark in the U.S.

If you are a foreign business owner looking to tap into the large consumer market in the United States, begin by first registering your trademark with the USPTO.  It is important to file your trademark application in the U.S. as soon as possible to prevent others from registering a similar mark.  If you already have a registration of your trademark in your home county, you can apply to register your trademark in the U.S. and not have to prove actual “commercial use” in the U.S. for up to five years.  This effectively allows you to reserve the name in the U.S. while you work to get sales of your products into the U.S. started.  All that said, it is important to note that a recent rule enacted by the USPTO now requires foreign applicants to work with a U.S. based attorney.  Consider the following reasons to register a trademark in the United States.

Large Consumer Audience

If your business isn’t already reaching the U.S., it likely will soon, through research and development, licensing, or sales.  With a population of over 325 million people spread out over every demographic and age range, the U.S. offers a target market for almost any product or service.  Whether your new app is geared toward tech-savvy millennials or your health supplement targets retirees, you can find a large customer base backed by a strong economy, which could lead to great success for your business.

One way foreign businesses find success in the U.S. is by offering products on sites like Amazon, which sells over 12 million items a year.  This can be an extremely lucrative business model for foreign companies, but it can come with risks as well.  Sales of counterfeit products are common, and the process to remove these listings can be challenging.  If you plan to sell your goods on Amazon, begin the process to register your trademark now.  Once it is registered with the USPTO, you can then qualify for Amazon Brand Registry, which provides “increased authority over product listings with your brand name” among other valuable benefits.

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The United States Patent and Trademark Office, or USPTO, receives over 400,000 new trademark applications a year, and anyone of those marks could be similar to yours.  If you put off trademark registration, you may find a similar mark has already been filed, which could cause your application to be rejected by the USPTO.  Whether you plan to do business in the U.S. this year or five years from now, it is wise to consider obtaining a U.S. trademark registration as soon as possible.

When you submit your application with the USPTO, you will receive a priority date.  This means that anyone looking to file a similar trademark after that date will not be approved.  It is critical for the success of your business in the U.S. to secure a priority date now.  Maintaining exclusive use of the mark will help to build a strong customer base in the U.S. and the legal protections against infringement are incredibly valuable.

U.S. Law Concerning Foreign Trademark Applicants

In August of 2019, the USPTO implemented one of its biggest policy changes in recent years.  The new rule requires foreign applicants to be represented by a U.S. attorney.  This applies to all trademark applications, Office Action responses, and renewals.  An applicant is considered ‘foreign’ by the USPTO if the business or individual has a permanent legal residence or a principal place of business outside the U.S.  While foreign applicants will still be able to file the initial application without an attorney, they will not be able to respond to any Office Actions issued by the USPTO until they have legal representation.  It is worth noting that applicants filing a basic application through the Madrid Protocol may be exempt from this new policy if that application does not require any amendments to conform to U.S. standards.  In most cases, an application filed through the Madrid Protocol will require amendment to conform to U.S. standards, and, a U.S. attorney would be required to make sue an amendment.

US Trademark Registration for Foreign Companies

If you own a foreign-based business with a registered trademark in your home country, the time to register in the U.S. is now.  With a boom in e-commerce and technology companies in recent years, if you aren’t currently doing business in the United States, you will soon.  Therefore, it’s important to begin the process as soon as possible to ensure that these valuable legal protections are in place when you are ready to expand to the U.S.  You can choose to file directly with the USPTO or through the Madrid Protocol, but it is important to remember that you will need to hire a U.S. based attorney in most cases to secure a final U.S. trademark registration.  Contact Gerben IP today to learn more about U.S. 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 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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