Tag Archives: international trademark protection

Non-U.S. Businesses Registering Trademarks in The United States of America


A Warm Welcome To The U.S.A.

The United States welcomes the filing of trademark applications by foreign business owners.  …so much so, that Section 44(e) of the Trademark Act does not require that such an applicant make actual use of the mark in the United States. See, Trademark Act, § 44(e), 15 U.S.C. § 1126(e); Also see, Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 223 U.S.P.Q. (BNA) 909, 1984 TTAB LEXIS 22 [15] (TMT App. Bd. 1984)(“Use in commerce over which Congress has control need not be alleged…”).  “Section 44(e) gave such foreign applicant a significant advantage over other applicants in procuring a registration in this country.” Id.; See also, Crocker at [15]-[16].

The treaty that arose from the Paris International Trademark Convention, as well as other international conferences, does away with the requirement of “use” that is found in the other parts of the United States Lanham Act governing trademarks in the case of foreign applicants who wish to obtain a United States Trademark Registration based on ownership of a corresponding trademark registration in a foreign nation. The Trademark Law Treaty Implementation Act of 1998 (TLTIA) Pub. L. No. 105-330, 112 Stat. 3064 (15 U.S.C. 1051) states: “The requirement in §§1(a) and 1(b) for the applicant to state the mode or manner in which the mark is used or intended to be used on or in connection with the goods (the “method of use clause”) is eliminated.” See, Crocker Nat’l Bank v Canadian Imperial Bank of Commerce, 223 USPQ 909 (TMT App.Bd. 1984)(Application to register U.S. trademark based on foreign application need not allege or show use of the mark in commerce, as otherwise required in Lanham Act because such requirement is inconsistent with international treaty); See also, In re Societe D’Exploitation de la Marque Le Fouquet’s, 2003 TTAB LEXIS 407.

China, Germany, Mexico, Brazil, Italy, Venezuela, Canada, France, Israel, Ireland, Iran, Colombia, India and many other countries joined as “Contracting Parties” to the Paris International Trademark Convention.”  For a list of Contracting Parties, see http://www.wipo.int/treaties/en/ShowResults.jsp?treaty_id=2

If your business domiciled outside the United States and it either: 1) owns a trademark registration in a country other than the United States; or 2) has filed an application to register a trademark in a country other than the United States (in the past 6 months), your business might be entitle to significant advantages under United States law.  Contact us immediately.  Some of the benefits must be requested in a limited amount of time.  The attorneys at the firm of Santucci Priore, P.L. have considerable experience in protecting the rights of clients in many countries participating in this exciting world economy.

Please contact us if you have any questions about registering a trademark for a non-U.S. business.


Importance of International Trademark Registration

With the expanding international scope of business today, business owners need to be aware of ways to ensure that their brand and goodwill is protected internationally. Protection of trademarks is considered territorial, which means that protection over a trademark in one country usually does not provide protection in other countries. For example, a trademark registration in the United States will only provide protection against infringing uses in the United States, but not in Europe or China. To be protected in foreign countries such as those in Europe and in China, registrations must be acquired in those jurisdictions.

So is international trademark protection worth the cost? Just ask basketball legend Michael Jordan, who is currently involved in a trademark lawsuit with a Chinese company called Qiaodan Sports over the use of his name and jersey number “23” without his permission. Even though Michael Jordan is internationally known, Qiaodan Sports has recently obtained a judgment[1] in its favor in China allowing its use of the Chinese equivalent of Michael Jordan’s name and his jersey number. Michael Jordan is not the only one squaring off against foreign companies in the trademark arena. Similarly in China, Apple, Inc. was involved in a dispute regarding an iPad trademark and ended up paying millions to settle the case. United States shoemaker New Balance has also been involved in trademark disputes in China. The failure to properly register trademarks in foreign countries can cause the potential loss of business in lucrative markets.

So what options are there? One of the main differences in the registration of trademarks over different jurisdictions is that some jurisdictions recognize trademark rights based upon the first to register, while others, such as the United States, recognize trademark rights based upon the first to use the trademark. Nonetheless, there are systems in place which permit cost effective and efficient registration of a trademark in multiple jurisdictions at a time. One such system is entitled the Madrid Protocol, which allows a single trademark application be filed in multiple countries that are governed by the Madrid Protocol, such as countries that are part of the European Union and in China. Countries in the European Union and China should not be ignored as they represent a large portion of international business. Often a United States trademark registration is not enough to stay internationally competitive. The filing of international trademark applications may be a good idea for your business and there are several important considerations, such as whether a country is covered by an international treaty and the applicable filing fees. Please contact our office if you have any questions regarding international trademark registration or the information in this article.

[1] Subject to any appeal.

Daniel Devine
Santucci Priore, P.L.