International Protection

Obtaining Protection for Your Mark Outside the United States

Trademarks issued by the PTO have no effect outside the United States and its territories. Companies desiring protection for their marks in other countries must register their marks in those countries. In most instances, owners of U.S. registrations rely on the protections of the Paris Convention of 1883, adhered to by more than 130 countries, including those in Europe and most of South America, Canada, Mexico, and many African and Asian nations. The Paris Convention is based on the principle that countries will provide the same patent and trademark protection to citizens of other member nations as they do their own citizens.

The most significant feature of the Paris Convention is that it offers priority to member nations. If a citizen of a member nation files an application for a trademark registration in any Paris Convention nation within six months after filing in his or her home country, the foreign application is given the filing priority date of the earlier home application.

Other significant rights arise from the 1996 European Community Trademark System (the CTM System) adhered to by the fifteen member nations of the European Union (Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, Netherlands, Portugal, Spain, Sweden, and the United Kingdom). Rather than filing separate trademark applications in each foreign country, a trademark applicant can file one CTM application; when the registration is issued, protection is afforded in all fifteen member nations. The European Union is considering allowing Bulgaria, Romania, Slovakia, Latvia, Lithuania, Malta, and Turkey to join.

Because the searching systems and databases in foreign countries vary from nation to nation and because each country has its own trademark laws, most trademark applicants need the assistance of experienced foreign counsel to prosecute applications in other countries. Many U.S. law firms have relationships with these foreign attorneys, called associates, and rely extensively on them to advise U.S. trademark owners wanting international protection.

Companies wanting to do business internationally should give immediate and careful consideration to protecting their marks in other countries. Many countries follow a first-to-file principle, meaning that the first party to file a trademark application owns the rights to the mark, even if the mark has not yet been used. This has encouraged stockpiling of marks in some foreign countries with later attempts to ''ransom back'' marks to their true owners. Although the United States works carefully with many countries to encourage them to strengthen their intellectual property laws, trademark piracy is still common in many foreign countries. Thus, early filing is strongly encouraged for companies wanting to go global.

Rights of Foreign Nationals to U.S. Trademark Protection

Just as U.S. trademark owners can file applications in other countries, one need not be a U.S. citizen to obtain a trademark registration from the PTO. Foreign nationals can file applications with the PTO, and those applications are prosecuted nearly identically to their U.S. counterparts. If a foreign owner is a citizen of a Paris Convention member, he or she can file in the home country and then, if the application is filed in the United States within six months, can obtain the benefits of the earlier filing date. The foreign applicant must designate someone in the United States who will receive communications and documents relating to the mark.

Additionally, because of various treaty commitments, the United States allows owners of marks registered in most foreign countries to file an application and secure a U.S. registration even if the mark has not been used anywhere in the world. This is because many foreign countries grant registrations even if the mark has not been used in that country. This foreign registration can then be used as a basis to obtain a U.S. registration. Ultimately, the mark must be used in the United States, or the U.S. registration will be canceled. In sum, whereas U.S. citizens must always use a mark before the PTO will issue a registration, owners of foreign registrations are able to obtain a registration from the PTO without a showing of such use.