Why Obtaining A Trademark Registration Outside The United States Is Important

There is an important difference in the way trademark rights are perceived of in the United States and the way trademark rights are perceived of in other countries. The distinction has to do with actual use of a trademark in commerce to offer a product or service for sale.

Trademark rights in the United States are established by the actual use of a trademark. Thus, if one uses a trademark in the United States, the rights to exclude others from use of that trademark in the United States begins accruing to the user on the date of first use of the trademark. These rights are called common law trademark rights. Common law trademark rights can be every bit as effective as the rights provided by a trademark registration. Thus, a trademark registration may not be necessary in the United States for strong, extensively used trademarks.

The trademark registration system in the United States requires actual use of the trademark before a trademark may be listed on either the US Principal or Supplemental Register of Trademarks. While it is possible to apply for registration of trademark, more properly called a listing in the Principal Register of US Trademarks, using only an intent-to-use trademark as a basis for the registration application, the actual listing or registration of the trademark will only happen when proof of the actual use of the trademark is provided to the United States Patent and Trademark Office (USPTO).

In many countries outside the US it is possible to obtain a trademark a registration and reserve the trademark for future use. Specifically, there is no requirement that a trademark be in actual use to sell goods or services in commerce to obtain a trademark registration. Thus, an applicant for a trademark registration may obtain rights to a popular trademark from another country, for example the United States, preventing the United States owner of the trademark from using the trademark because of a trademark registration. Such cases often end with the United States business paying lots of money to acquire the rights to use its own trademark in another country.

The first business lesson in the foregoing scenario is that if a business intends to expand its customer base outside the United States, the first step should be applying to obtain trademark rights in those countries where products or services will be sold. Such applications should be submitted shortly after the decision to expand into the markets of another country.  Waiting until just before product launch to apply for a trademark registration can have disastrous consequences if another has obtained rights to a trademark which is popular in the United States.

The second business lesson in the foregoing scenario is to apply for trademark rights in those countries in which a particular product may be copied. Once trademark rights are obtained it may be possible to obtain the seizure of products with infringing trademarks before the infringing products ever leave the factories in which they are made. Further, international trade treaties may be used to prevent the export of products with infringing trademarks to the United States.

Many wrongfully assume that the small R in a circle symbol next to a trademark is an indication of international trademark rights. This is not true. Trademark registrations are national in nature; that is the small R in a circle should only be used in the country in which a trademark registration has issued to serve as the basis for preventing trademark infringement.

The bottom line for any business that contemplates expansion into international markets or anticipates some type of trademark infringement or counterfeiting outside the US is to start building a portfolio of international trademark registrations in those countries where a product or service is to be sold or where counterfeiting is anticipated.