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
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!
Recent questions
I am looking for ...
3 6115 2