Protecting Trademarks Abroad
In the United States, trademark rights are granted to the first person who uses a mark in commerce. However, in most other parts of the world, trademark rights are granted on a first-to-file basis. A US company using a mark abroad without the benefit of owning a registration in the particular jurisdiction risks encountering an infringement claim lodged by the owner of a trademark registration for the same or similar mark, even if the US party was the first user of the mark in the foreign jurisdiction.
While trademark applications can be filed virtually anywhere in the world, due to cost considerations, we generally recommend that our clients file in only those countries where they are presently undertaking business, anticipate soon doing business directly or through agents or distributors, or are manufacturing products for sale elsewhere.
Even if a company is not yet doing business abroad, it often makes sense from a defensive standpoint to secure international trademark rights in order to ensure that a major potential market remains open and/or that products being manufactured in a foreign locale are not seized by customs officials for alleged trademark violations. Many jurisdictions provide a trademark owner with a five year term before a registration is vulnerable to cancellation based on non-use, so securing foreign registrations can provide a cost effective means for US-based applicants to obtain valuable trademark rights.
Popular destinations for filing foreign trademark applications are the European Union, Canada, Japan, China, and India.