Same trademark, different country

It is possible for others to register a US trademark in a foreign country. A US trademark registration does not block others from registering the same mark outside the US. Trademark rights are territorial. A US trademark registration does not extend beyond geographical limits of the United States. If you own a US trademark registration or have used your mark in US commerce, you should consider filing trademark applications in any foreign countries where you might seek to do business. Otherwise, you run the risk of not being able to make or sell your product in another country where an enterprising third party may already registered the same mark.

Does a US trademark registration provide international protection?

No, trademark rights are generally obtained by country or region, such as the EU. A US trademark, for example, may be valid and enforceable only in the United States, but not overseas. US trademark owners would need to apply in foreign countries or regions in order to extend their trademark rights beyond the borders of the US.

What if your products are sold in the US, but made in China or another foreign country?

If your products are sold only in the US, your natural inclination may be to register your trademark in the US alone. This may be shortsighted if your products are made overseas. Consider the risk that a third party might register the identical mark in the foreign country where your products are manufactured. Such a foreign registration may actually block you from manufacturing your goods in that country or from exporting the goods out from the country of manufacture.

Registering your mark in foreign countries is a strategic, preemptive measure to protect your business. You are eliminating potential attacks by foreign actors who might otherwise interfere with your business.

What if a foreign company applies for a similar trademark in a foreign country before you do?

Timing is important. Ideally, you’ll want to file your foreign trademark applications within 6 months of your US filing date so that the foreign applications will get the benefit of your US filing date. If over six months have passed since your US filing date, don’t despair. You can still file foreign trademark applications, only without the benefit of the earlier US priority date.

Suppose you file a US trademark application before third parties attempt to register the same mark abroad. If you file your foreign applications within 6 months of your US filing date, your foreign applications will be given priority over those third party filings. This is especially helpful when your foreign applications are filed after the filing dates of the third party applications. Your earlier US filing date allows you to backdate your foreign trademark applications, thereby beating the filing dates of third parties attempting to register your mark.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and entrepreneurs with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com