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Foreign Brand Owner’s Guide to US Trademark Registration

US-trademark-registration

US trademark registration is not only available to U.S. trademark owners. Foreign based brands can also obtain a US trademark registration. The global economy means brands launched today online in Europe or Asia may also have US customers. International trademark registration is an important tool for trademark owners to protect rights in foreign countries, including the US.

Recent reports show a rampant increase in the sale of counterfeit goods from China on Alibaba and Amazon.  Online sales of counterfeit goods are but one example how all trademark owners are challenged to protect their brands in the global marketplace.

Even US brand owners have issues. Apple had to pay $60 million to get rights to the mark iPad in China, since a third party had already registered the mark.

Foreign Brands Can Obtain a US Trademark Registration

Foreign nationals seeking a US trademark registration should understand two important concepts.

First, US trademark registration is available to a foreign nationals through international trademark treaties. These treaties guarantee protection for foreign nationals on the same basis as US citizens. Non US based brand owners filing in the US receive the same trademark protection as U.S. trademark owners.

As we’ll see, foreign nationals often have better protection than US trademark owners, at least for the first six years following registration. When the foreign national relies solely upon an existing foreign registration, there is no requirement that use be proven to obtain a US trademark registration. By contrast, Americans must allege and prove actual use as a condition of issuance of their US trademark registration.

While foreign nationals often obtain a US trademark registration without proving use, that advantage does not last forever.  US law requires proof of actual use of the mark in order to maintain rights. The requirement that the owner prove use in order to maintain a U.S. trademark registration is a concept which is “foreign” to non-US brand owners. Proving use requires commencing actual use in the US before the end of the sixth year following the date of the registration.

Two ways a foreign national can file for a US trademark registration

Trademark treaties allow trademark registration around the world for all trademark owners who reside in countries that are signatories to the treaties. Foreign nationals are permitted to rely upon their home country registration to seek a US trademark registration.

There are two key treaties administered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, created as a part of the United Nations in 1967.

Paris Convention Filings Directly Into the US

The first, known as the Paris Convention, allows filing directly into the US using the foreign application or registration as a basis for the filing. The applicant can choose to buy pass the US use requirement in the US if a valid foreign registration has issued.

The Madrid Protocol System

The second treaty, commonly referred to as the Madrid Protocol, allows filing into the US directly with the trademark office in the home country.  Upon filing, the applicant receives an International Registration number issued by WIPO. The owner “designates” those countries in which they wish to seek protection, based solely upon the existence of their home country pending application or registration. The application for each country is forwarded by WIPO to the local office.

Despite ease of filing, there are risks to using Madrid

Regardless of filing method one chooses, the US Trademark Office examines the application as it would any application filed in the US to make certain there is no likelihood of confusion with an existing registration or prior filed pending application.

There are risks in using the Madrid System, despite “ease of filing” factor. First, the home based registration or application determines 1) the scope of the goods and services which can be registered; and 2) registrations in every country designated outside the home country are dependent upon the continued validity of the home country registration. If the home country registration is ever challenged, abandoned, or not successfully maintained, protection in all other countries is also lost! That is not true for direct filings made through the Paris Convention. For these reasons, we do not advocate use of the Madrid System except in those cases where we know our clients have a strong home based registration, and that they will properly maintain that home country registration.

Another point to keep in mind is that when Office Actions or rejections issue in the United States, it is typically necessary to engage the services of a US trademark attorney to properly respond. Papers issued by the US Trademark Office are first sent to WIPO, which then forwards the Office Action to the registrant, by paper mail. Office actions can easily be delayed or not received in time to respond.

Fraud & the Five Year Use Declaration

Between the fifth and sixth years following the date of registration, all owners of US Trademark registrations must file samples of use of the mark in commerce. The Section 8 declarations of continued use is designed to purge the Trademark Office records of marks that are no longer in use.1 The owner must submit samples of use, together with a declaration under penalty of perjury that the mark is still in use for all of the goods stated in the registration. If some or all of the goods are not being sold in the US, the owner cannot in good faith file the declarations. The owner should delete any goods or services that are no longer being sold under the mark. Failure to honestly do so makes the registration vulnerable to attack by third parties based upon allegations of fraud on the Trademark Office.

The tools for global trademark registration exist for brand owners around the world. It is wise to develop and implement a protection strategy over time. Once there is a plan, the next step is to assemble a strong team that includes expert US local counsel. This increases chances for successful US trademark registration, insures timely filing of maintenance requirements necessary to maintain registrations for the long term value of the brand.

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  1. TMEP 1604.05; 37 CFR Section 2.161