Securing Your Trademark in the U.S: Best Practices for Foreign Brand Owners

Gibney Anthony & Flaherty, LLP
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When establishing a business in the U.S., intellectual property issues are a critical part of your business planning. Developing a comprehensive strategy is key in securing your intellectual property and protecting your business in the long-term. To get started there are three basic steps that all entrepreneurs should consider when entering the U.S. market.

Conduct a Trademark Clearance Search

The first step in introducing a trademarked product into the U.S. is to determine whether the trademark is already in use. Dis­putes over trademark rights are usually resolved in favor of the first user, and it is wise to determine in advance whether anyone else is using the trademark. Trademark rights are territorial – this means that the trade­mark rights in your home country do not automatically apply in the U.S. Conducting a trademark search with a U.S. attorney will determine if your product’s trademark is available by providing a complete list of federal and state trademark registrations and additional information from computer databases.

Register Your Trademark

Once the trademark has been cleared for use, there are several registration options:

  • Foreign Registration Basis or Section 44(e): This can be an option if you own a foreign registration of the same trademark for the same goods and/or services from your country of origin. This requires the owner to have a good faith intention to use the trademark in the U.S.
  • Intent to Use: The second option is to file an “intent-to-use” application. This is available to individuals and businesses that have a good faith intention to use a trademark in the U.S., but have not yet sold products bearing the trademark in the U.S. It allows businesses to determine whether the U.S. Patent and Trademark Office (USPTO) will approve trademark applica­tions before spending the money to bring new products to market. It can also give the applicant an early priority date and nationwide rights. However, unlike Section 44(e), a registration based on intent-to-use will not be issued unless the trademark is used on goods within a specified time after the application is approved.
  • Actual Use: The third registration method is based on actual use. It requires that the applicant has used the trademark on goods sold in interstate commerce as part of a legitimate sales effort, not a mere “token use.” Specimens of use must be submitted with certain information such as the date of first use.

Police Your Trademark

Avoid Abandonment
In the U.S. trademark rights are created through use. The first to use a trademark on goods (or a service mark for services) sold in inter­state commerce will generally have the exclusive right to use the trademark on those goods. However U.S trademark owners must enforce these rights to avoid “abandonment.”

Monitor Infringement
The unautho­rized use of the same or a confusingly similar trademark can lead to loss of trademark rights. Many U.S. trademark owners use “watch services” to discover potential infringements of their trademarks. Once an infringement is discovered, a “cease and desist” letter should be sent. In some cases it is necessary to sue for trademark infringement. If infringement is proven, as a trademark owner – you may be able to recover damages, the infringer’s profits and, in certain circumstances, triple damages and attorneys’ fees.

Prevent Counterfeiting
A registered trademark may be recorded with U.S. Customs and Border Protection, which will exclude counterfeit and unauthorized genuine (gray market) goods from importation into the U.S. Such Customs protection may be limited, however, if the owner of the U.S. trademark is a foreign company or a U.S. company owned or controlled by a foreign company that owns the trademark outside the U.S.

Trademark Filing Requirements

Obtain a U.S. Attorney
In August 2019 USPTO implemented a new rule that all foreign trademark applicants and registrants must be represented by a licensed U.S. attorney. The exception to this is applications filed under the Madrid Protocol, which allows a trademark owner to file a single application to apply for protection in up to 122 countries.

Provide a Valid Owner E-Mail Address
As of February 15, 2020, the USPTO requires all new trademark applications and post-registration filings to include a valid email address for the trademark applicant in addition to the name, email address and postal address of a licensed U.S. attorney.

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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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