Trademark Infringement Outside The United States

What Should You Do To Protect Your Brand Outside The U.S.?

There are many businesses that invest a substantial amount of time and money into their company's branding. This may include a name, logo, and the names/logos of products and/or services. For example, consider Apple, which has trademarks on its overall name and logo, and then the trademarks branch out to various product lines, such as the iPhone. Companies trademark their names and logos to ensure that competitors cannot confuse consumers by choosing similar names.

Trademarks help establish control of one's brand across the United States. Though, as markets become increasingly globalized, businesses need to protect their trademarks within the borders of the United States and around the world. After all, iPhones are not only sold in the U.S. but also countless other countries. Protecting trademarks globally is important.

International Trademark Protection

Prior to exploring international protection, it's crucial to understand the basics of a trademark. A trademark can be classified as a word, name, or symbol intended to identify and distinguish the goods or services of one seller over another. Additionally, a trademark can prevent others from using the same mark in a comparable market. When lawyers reference trademarks, they typically mean marks formally registered with the U.S. Patent and Trademark Office (USPTO).

Moreover, not all trademarks are federally registered. A business can establish so-called "common law" trademark rights. These rights for unregistered marks are generally local, which means that an original business could file a lawsuit in state court to prevent a competing company from operating within a reasonable distance. A court could enforce these rights as a matter of common law unfair competition without a formal USPTO registration. Apart from the usage of these common law trademark rights, businesses, significantly more prominent companies that do business across multiple states and/or countries, prefer to have protection from a federally registered mark. In addition, most marks are typically registered within a specific class of goods, granting great benefits to federal registration.

U.S. Trademarks and International Infringement

Unfortunately, just because you register your trademark with the USPTO, it does not prevent your mark from being infringed upon in a foreign country. Trademarks are fundamentally a domestic right, created by domestic statutes and enforced by domestic courts. Therefore, the fact that you have an American trademark will not entitle you to sue a Canadian company in a Canadian court for using your company's logo in Canada.

With that being said, owners of U.S. trademarks can inquire a registration abroad. Commonly, registering with countries that have joined the Madrid Protocol, one of the most significant treaty schemes governing trademark rights worldwide. As of now, there are 117 countries that have agreed to enforce trademark rights across borders due to the Madrid Protocol.

Are you wondering how a foreign trademark registration process works? After receiving your domestic trademark through the USPTO, you can file a unified trademark application, also known as an international application, with the WIPO. The application will be subject to fees determined by the WIPO themselves. The resulting registration serves as a mechanism for seeking protection in these countries. Notably, each country applies their own domestic laws to determine whether a mark may be protected in their country.

Additional International Trademark Focus

What Steps Should You Take If Your Trademark Is Infringed Internationally?

Importation of Counterfeit Products

International protection consists of more than suing infringers in foreign countries. It can also mean stopping counterfeit products from entering into the U.S. Importation of counterfeits can be a much greater threat to most companies versus the production and sale of goods abroad.

U.S. Customs and Border Protection plays a significant role in monitoring importation in the United States. Those that hold valid trademarks are able to register their marks with the CBP on the Intellectual Property Rights e-Recordation Website. Registering your mark will trigger certain basic enforcement measures by the CBP due to their goal of stopping the importation of infringing merchandise using your registered mark. CBP will actually seize any infringing imports and you will receive notice if they find a violation of said wrongdoings.  

Furthermore, there are minimal registration fees associated when you register your mark. The value can be tremendous though, and you will gain the benefit of protecting your mark from frequently counterfeits. All of that said, registering your mark with CBP can be an overall wall of protection but it wont stop all international counterfeiting and importation.