Why register a foreign trademark?

Why register your trademark in a foreign country?

While I’ve discussed how to file foreign trademark applications, let’s dig into the why question. IP rights are territorial. That means a US trademark registration does not provide the trademark owner with rights outside the United States. While your federally registered trademark may provide you with certain exclusive rights within the US, it will not give you the ability to stop others from using the mark in foreign countries. In certain situations, therefore, it may be a good business move to register your trademark in a foreign country.

Need to register your trademark in a foreign country? Call (949) 223-9623 or email vlin@icaplaw.com to obtain flat rate quotes for filing your foreign trademark.

Trademarking Goods vs. Services in Foreign Countries

Considerations for trademarking goods in a foreign country will obviously differ from those for trademarking services. With goods, it is becoming increasingly rare to find products made in the USA. To the extent that others may manufacture competing products under a similar name in a foreign country, it may help to obtain trademark registrations in select countries.

Here are some scenarios that might justify a decision to register your trademark for goods in foreign markets. For example, you may want to take certain actions against competing goods using a similar or counterfeit name or to:

  • block the manufacturing of those goods in a foreign country
  • prevent the export of goods from a foreign country
  • stop the sales of goods in a foreign country
  • stop online sales of goods originating from a foreign country

For services, consider whether you will actually be providing your trademarked services in foreign countries. Be careful with online services. With the Internet making our world smaller, you might be selling services to foreign clients without realizing it.

For example, suppose you are offering software-as-a-service to anyone and everyone. What is the likelihood that someone outside the US may use your service? Does it make business to register your mark in a particular foreign country where demand may be stronger?

Use Not Required for Certain Foreign Trademark Registrations

Certain foreign countries adopt a first to file rule for registering trademarks without requiring usage of the mark on the applied-for goods or services. For example, some countries enable applicants to register a trademark for a high number of goods or services without having to show use. As long as there is no prior registration for a similar mark, then whoever files first gets the trademark registration.

The absence of use requirements will make it very easy for someone to see the potential value of your US registered trademark, and apply to register that trademark in their country.

It’s not a problem until it is

Perhaps, you don’t care if your trademark is registered by someone else in a foreign country as long as they do not interfere with your sales. But what if they then try to block you from selling in that foreign country? Even if you do not sell in any foreign countries, could others try to block you from manufacturing your goods in your country of manufacture? What if try to extract payment from you in order to continue manufacturing or selling in that country?

It may not be cost-effective to register your trademark in several countries, but it might be worthwhile to consider the value of registering in a foreign country that presents a greater commercial significance.

Even if you do not intend to enforce your foreign trademark registration against others, consider the defensive value of registering your trademark in countries in which you do not want to be restricted.

Need to register your trademark in a foreign country?

Call Vic at (949) 223-9623 or email vlin@icaplaw.com to explore your foreign trademark filing options and costs.

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