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Tag Archives: US trademarks

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.