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Foreign Trademarks Must Be Registered in the U.S. to Be Enforceable Here

Unlike copyrights or patents, trademarks operate under a country-by-country legal regime.  The legal force of a registered trademark evaporates when crossing a border to a nation where it is not registered.  Without a registration in a country, a foreign trademark owner generally has no effective rights in that country, except for weaker common law rights that derive from actual trademark use.

While European trademark owners can register Community marks through the European Union Intellectual Property Office, giving them trademark protection throughout the E.U., the United States does not recognize foreign trademark registrations per se, and no comparable international registration regime covers the U.S.

An application to register a foreign trademark in the United States must satisfy all of the requirements of a domestic owner seeking to register its own mark with the United States Patent and Trademark Office, with one exception discussed below.  The mark cannot be confusingly similar to a registered U.S. mark, cannot be descriptive, and the descriptions of goods and services must comply with the USPTO’s rules, as some foreign trademark offices allow much broader identifications of goods or services.

United States trademark owners must prove use of their mark in commerce to obtain a registration and the protections that go with it.  However, foreign trademark owners may register a mark in the U.S. under the Lanham Act merely by expressing a bona fide intent to use the trademark in the United States.  (By contrast an American business may apply for a trademark on an intent-to-use basis, but the Trademark Office will not register the mark until the owner proves actual use).  The benefits for a foreign trademark owner include the ability to lock out other potential users of the mark for up to three years without even using the trademark in the United States.  In addition, a foreign trademark owner can effectively backdate its United States trademark registration to the date that it first filed for the same trademark overseas if it files an application for the same mark in the U.S. within six months of filing abroad.

Eventually, however, even a foreign trademark owner must demonstrate use of the mark in connection with the goods and services listed in the registration.  Sections 5 and 8 of the Lanham Act require an owner to submit an affidavit and evidence demonstrating use of the mark in commerce with all of the goods and services listed in the registration.  This requirement can be challenging because foreign owners sometimes list a vast array of goods and services in the original application; those not in use must be deleted from the registration to avoid a possible claim of fraud on the Trademark Office.  Likewise, any trademark registration is subject to cancellation on grounds of nonuse if the owner has not used the mark for three consecutive years and does not demonstrate an intent to resume use.

In sum, foreign trademarks owners have certain advantages over domestic brands in seeking U.S. trademark registrations.  Without a registration, however, the foreign brand may have no rights in the U.S.  Foreign brands seeking protection in the United States should consult with counsel early in the planning process to protect their rights.

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