Can our U.S. Trademark give us some protection abroad?

Question

Hello! We have a registered Trademark in the United States. If we market our products abroad, can we prevent others in the respective country from using our brand based on the U.S. Trademark? I guess we should apply in other countries too, but we have been hesitant to do that because of cost. Does our Trademark provide protection in the sense that others using our U.S.-registered brand are clearly doing this to exploit it? Do we absolutely have to register in every country individually?

Answers: 3 public & 0 private

018
Patent Attorney

The laws vary from country to country, but yes, you should register in each country that you intend to promote your brand. Here in the US, we have common law trademark rights, which allow you some trademark protection even if the trademark is not registered; your common law rights depend on use and timing. The same may apply in other countries, but you'll need to research or seek counsel in those countries. You may be able to mitigate your costs though, for example, the EU (European Union) has a system to register your mark across all of the EU countries. Also, there is the Madrid protocol (treaty name) that simplifies registering your marks around the globe with countries that are a party to the Madrid treaty...but still there are costs for each country you decide to enter.

The short answer to your question though is No, you can not prevent others in other countries from using your brand based upon your US trademark rights. Hope that helps

Ruslan karadzhov
Trademark Agent

Check out the cartoon we have created about this very topic:

http://trademarkfactory.ca/cartoon/will_my_american_trademark_protect_me_in_canada

It's only 3 minutes long and gives a pretty good idea how this works.

Hankfasthoff
Lawyer

Generally speaking, US trademark law does not extend beyond the geographical borders of the United States. Those laws may, however, be applied extraterritorially in limited circumstances, such as when (i) the defendant is a US citizen, (ii) the defendant's conduct has a "substantial effect" on US commerce, and (iii) there is no conflict with the trademarks laws of the foreign country. This is one test that's been adopted by a number of courts, and it's a difficult standard to meet. If just one of these factors isn't present, it's unlikely that a US court would find that US law can be applied.

If your trademark were infringed in certain generic or country code top level domains, e.g., yourbrand.com, .net, .us, .co, etc., then you may be in a position to obtain ownership of the infringing domain under the Uniform Dispute Resolution Policy or other applicable authority.

Litigating a trademark case in a foreign country could be significantly more expensive than filing foreign trademark applications. As Robert notes, depending on where you are operating you may be able to file applications that cover entire territories, such as the European Union.

Good luck!

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