We often get inquiries or calls from clients informing us they own the trademark registration in their home country, whether it be England, Canada, Australia, or more. The first question these business owners often ask is, “Do I need to register my trademark in the United States if I own the trademark in my country?” The simple answer to this question is yes. If you live outside the United States and are planning to sell your product or service within the United States, you’ll want to seek trademark protection for your trademark within the United States.
The United States is a “First to Use” jurisdiction, which means the first person or business to use that trademark in commerce, has the priority rights for that trademark. This is in contrast to most foreign countries which are “First to File” jurisdictions, meaning the first person or business to file the application for trademark registration will have the priority of that trademark. Thus, a different strategy should be employed when seeking trademark protection within the United States.
However, if you do already own the trademark in your home country, there may be some additional benefits when you seek to file for a trademark in the United States. If you do indeed own the trademark in another country, you can file a 44 (e) in the United States, claiming the foreign owned trademark as your basis. The benefit of doing this is that you do not need to establish that the trademark was being used in commerce in the United States before receiving the registration.
What if you haven’t yet received a registration yet, but you have filed an application for your trademark in your home country? This is still a good thing, and you can use the date you filed your application in your home country as the priority date for filing your application in the United States. The only caveat here is that you have to file your United States Application within six months of you filing your application in another country.
Figuring out the different processes of different countries can be daunting, and a much bigger challenge than you have time for as a business owner. There is, one more option, for those who may be seeking trademark registrations in multiple countries. The Madrid Protocol, which was designed for the purpose of simplifying the international trademark registration process, is an international treaty that allows trademark applications seeking trademarks in multiple countries to file one application in the language of that applicant, that can then be submitted to a little more than 90 countries.
So you may find yourself in a position where you are planning to sell your product into several different countries, and want to protect your brand in each of these. In these instances, filing under the Madrid Protocol may make sense for you.
Here at MZJ, we handle international trademark matters every day and can help you navigate through these difficult subjects, no matter the country. Contact us today for a free consultation.