The question of whether you can "take" a foreign party's mark and register it in the US pits one of the bedrock principles of American trademark law—territoriality—against a narrow but powerful exception for famous marks and bad-faith filings. The short answer: yes, in many circumstances such a registration can be successfully obtained, but it carries substantial legal and financial risks, including expungement, damages, and attorney fee awards. The key threshold is whether the true owner can establish that the mark had a reputation in the US at the time of filing and that the applicant acted in bad faith.

The Default Rule: Territoriality

The United States is a "first-to-use" jurisdiction. Under the territoriality principle, priority of trademark rights is determined by priority of use in the United States, not by priority anywhere else in the world. This means that a foreign trademark owner who has neither used their mark in US commerce nor obtained a US registration generally cannot assert priority rights against a junior user who has—even if that junior user "knowingly appropriated that mark for his own use."

The leading case on territoriality is Belmora LLC v. Bayer Consumer Care AG. Bayer had sold analgesics under the FLANAX mark in Mexico since the 1970s but never used the mark in the US. In 2004, a Virginia company began selling FLANAX-branded pain relievers in the US and obtained a US registration. Bayer sued to cancel Belmora's registration. While the TTAB initially sided with Bayer, the Eastern District of Virginia reversed, holding that "the owner of a foreign mark that is not registered in the United States and has never been used in United States commerce may not assert priority rights over a mark that is registered and used in the United States." The court further explained that "Bayer's interests do not fall within the zone of interests Congress intended to protect." In short, without US use or registration, Bayer had no standing to sue. The US Supreme Court denied Belmora's petition for certiorari, leaving this territoriality holding intact.

The Exception: Well-Known Marks Doctrine

The territoriality principle is not absolute. A recognized exception is the well-known marks doctrine, which provides that a mark that is "well known" in the US can be protected even if it is not used or registered here. This doctrine stems from Article 6–bis of the Paris Convention, though it has not been expressly codified into US law, creating significant uncertainty.

In Grupo Gigante v. Dallo, the Ninth Circuit recognized the doctrine, holding that when US consumers recognize a foreign mark and the domestic user acts in bad faith by adopting it, the territoriality principle can yield to protect against consumer confusion and fraud. By contrast, the Second Circuit in ITC v. Punchgini declined to apply the well-known marks doctrine because, in its view, Congress had not expressly incorporated it into US law.

The Plumrose Holding v. USA Ham (2025): A Pivotal TTAB Decision

The scope of the well-known marks doctrine and the significance of bad faith were recently clarified in a precedential TTAB decision, Plumrose Holding Ltd. v. USA Ham LLC.

In this case, Plumrose (now part of Empresas Polar) had sold meat products under the LA MONTSERRATINA brand in Venezuela since 1949. USA Ham LLC, a US company, copied the brand without permission, applied to register the identical mark, and targeted Venezuelan-American consumers. Plumrose opposed the registration, arguing that the mark enjoyed a reputation among US consumers—particularly Venezuelan expatriates—and that USA Ham acted in bad faith.

The TTAB agreed and sustained the opposition. It found that Plumrose had standing to challenge the registration even without selling products directly into the US, because the mark's reputation extended to the United States through the Venezuelan diaspora. The Board concluded that the applicant's "copying clearly reflects a calculated, multi-faceted attempt to capitalize on Opposer's reputation for its LA MONTSERRATINA-branded meat products with at least some U.S. consumers."

Critically, the Board also found evidence of actual consumer confusion, including US consumers contacting the true owner in Venezuela asking about the product's availability in the US. The decision underscores that "U.S. trademark rights are not necessary to assert a claim under Section 14(3)"; a foreign owner can demonstrate entitlement to cancel by establishing reputational injury in the United States.

Meenaxi Enterprise, Inc. v. Coca-Cola Co. (Fed. Cir. 2022): The Evidentiary Burden

The Federal Circuit's decision in Meenaxi is equally instructive. Coca-Cola used "THUMS UP" and "LIMCA" in India for decades but not in the US. Meenaxi, a US company, registered those marks in the US. The TTAB cancelled the registrations, but the Federal Circuit reversed, finding that Coca-Cola failed to prove that the marks had reputation in the United States at the time of Meenaxi's filing.

The lesson: even if a mark is famous abroad, if the foreign owner cannot prove reputation among a substantial segment of US consumers, the domestic registration will stand.

The Mechanics: How a Third Party Can File Another's Foreign Mark in the US

The Lanham Act provides two primary pathways to obtain a US registration without proving use in commerce at the time of filing:

• Section 1(b) – Intent-to-Use (ITU): Any person may file a US application based on a bona fide intention to use the mark in US commerce. Proof of use must be submitted later—typically within 3 to 4 years—to convert the application into a registration.

• Section 44(e) – Foreign Registration: A party that owns a foreign registration for the same mark may obtain a US registration without proving US use at all, provided the goods/services in the US application do not exceed the scope of the foreign registration. In some cases, national trademark offices require only a valid foreign registration certificate to grant full domestic rights, creating a path for opportunistic filers.

Both pathways require the applicant to declare they have a "bona fide intent to use" the mark in the US. A knowingly false declaration can constitute fraud on the USPTO.

Under What Circumstances Can You File Someone Else's Mark in the US Under Your Own Name?

Synthesizing the cases, here are the factual scenarios that determine whether a US registration for a foreign mark is vulnerable to challenge:

The Plumrose and Meenaxi decisions frame a two‑part test for cancellation: (1) the foreign mark must have a proven reputation among a substantial segment of US consumers, and (2) the applicant must have acted in bad faith—that is, they deliberately adopted the mark to trade on the foreign owner's reputation.

Without both elements, territoriality generally prevails, and the junior US registration will stand. If both elements are present, the foreign owner can successfully cancel the mark—or in many instances, the first‑filer's brand‑owner customers will detect the filing and challenge it immediately.

Even If You Obtain a Registration, It Is Vulnerable: The TMA "Expungement" Trap

The Trademark Modernization Act of 2020 (TMA) created powerful new tools to challenge unused registrations. The key provisions:

• Ex parte expungement (Section 16A): Any person may petition, between 3 and 10 years after registration, to cancel a registration for goods/services that have never been used in US commerce. No standing is required—"any person" can file.

• Ex parte reexamination (Section 16B): Any person may petition, within 5 years of registration, to cancel a registration on the ground that the mark was not in use as of the date the registrant filed its declaration of use.

The TMA is "primarily directed at registrations under Section 44(e) (foreign registration basis) or 66(a) (international registration), neither of which requires proof of use to obtain the registration." Brand owners and their distributors routinely monitor the USPTO register and file TMA petitions to clear "deadwood" marks that clutter the register.

If you register a mark you never intend to use, the TMA provides a direct, low-cost avenue for any third party to destroy your registration.

Additional Liability: Fraud, Damages, and Attorney's Fees

Beyond cancellation, an applicant who procures a registration by a false declaration faces significant monetary exposure:

• Civil liability: 15 U.S.C. § 1120 provides that anyone who procures a registration "by a false or fraudulent declaration or representation... shall be liable in a civil action by any person injured thereby for any damages sustained in consequence thereof."

• Attorney's fees: The Lanham Act permits an award of attorney's fees in "exceptional cases," which courts have found to include wilful infringement and bad‑faith conduct.

• Trademark squatting: While "trademark squatting" primarily refers to registering a mark to sell it back to the true owner, the practice is increasingly scrutinized and can result in injunctions, damages, and reputational harm.

Practical Pitfalls

1. Proving good faith is not enough. Even if you independently conceived the mark, if you later learn of the foreign owner's reputation and continue to use it, your initial good faith may be irrelevant—the relevant inquiry is the mark's US reputation at the time of your adoption and whether your use creates a likelihood of confusion.

2. The "fame" threshold is fact‑intensive and expensive to litigate. Whether a mark is "well known" in the US depends on a multi‑factor analysis: the volume of sales, advertising expenditures, media coverage, and consumer recognition. A foreign owner may not have the resources to mount a challenge, but the risk remains.

3. A registration is not a license to use the mark. Even if you obtain a registration, you may still be liable for common law unfair competition, false designation of origin, or tortious interference claims under state law—claims that are not preempted by the Lanham Act.

4. The TMA empowers anyone to challenge your registration. Your registration is always vulnerable to an ex parte expungement petition if you never use the mark in US commerce.

5. Foreign owners actively monitor US filings. Many foreign brand owners and their distributors monitor new USPTO filings and will file oppositions, cancellation petitions, or TMA expungement petitions to protect their marks.

6. Your business partners will be scrutinized. If you sell through e‑commerce platforms, foreign owners can lodge complaints with Amazon, Stripe, and app stores, potentially shutting down your operations even before formal litigation.

Disclaimer

This article is for informational purposes only and does not constitute legal advice. Trademark law is highly fact‑specific. If you are considering filing a US trademark application—whether for your own mark or a mark that may be associated with a foreign party—you should consult a qualified US‑licensed trademark attorney. No attorney‑client relationship is formed by reading this article.