International Trademark Protection: Why Don’t My U.S. Rights Protect Me Elsewhere?

Trademark protection in one country does not provide any protection in other countries. For example, a United States trademark registration is only effective in the United States and will not offer any protection against infringing uses in the European Union. To be protected in the EU, a trademark owner must obtain a separate registration for that jurisdiction. Thus, in our increasingly globalized society, trademark owners must ensure that the goodwill represented by their trademarks is protected in those countries deemed significant enough to warrant protection. This is because of the inherently territorial nature of trademark protection. Generally, a trademark registration is only valid in the territory controlled by the issuing entity. This article provides a brief analysis of the available options for international trademark protection and some of the benefits of each approach.

I. Use vs. Registration

The U.S. recognizes common law trademark rights based on good faith use of an unregistered mark, state registration rights, and rights based on federal registration of a mark. In the United States, a mark must be used in commerce before a federal trademark registration will be granted. While it is possible to file an intent-to-use application prior to commencing use, it is only after use has begun that a federal registration will be granted. This system is the exception and not the rule around the world. Most countries recognize trademark rights based on the first to register, not the first to use the mark. Moreover, in many countries it is not necessary to begin using the trademark locally in order for a trademark registration to issue (although use may have to be undertaken at some point after registration). Thus, it can pay to secure trademark protection before use has commenced in many countries around the world for a variety of reasons.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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