How is the US trademark system different and how can a foreign applicant protect their name?

How is the US trademark system different and how can a foreign applicant protect their name?

  • 01 May, 2024
  • Nyall Engfield

How is the US trademark system different and how can a foreign applicant protect their name?

Filing trademarks in the United States as a foreign entity can present several concerns and pitfalls that differ from domestic trademark systems.

The U.S. trademark system shares some similarities with other countries' systems, but also has distinct differences. One of the key similarities is the principle of territoriality, which is a fundamental concept in trademark law across the globe. This principle asserts that a trademark is recognized as having a separate existence in each sovereign territory in which it is registered or legally recognized as a mark Abitron Austria GmbH v. Hetronic Int'l, Inc., 600 U.S. 412Fuji Photo Film Co. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591.

However, the U.S. system differs from many other countries in terms of how trademark rights are established. In the U.S., a common law country, trademark rights are primarily based on use and are confirmed by registration. This makes the U.S. a "first-to-use" jurisdiction, where the individual or entity that uses a mark, prior to another's use or application, obtains rights in that mark, regardless of whether that first user ever pursues a registration . Conversely, in most foreign countries, rights are usually only established by filing a trademark application with the national trademark office. These are considered "first-to-file" jurisdictions .

Another difference lies in the form of trademark assignment. The form of trademark assignment used in the U.S. is not universally accepted. For instance, it is usually not accepted in many Asian countries, whereas it is generally acceptable in Canada, Australia, South America, the European Union, and Benelux, provided that both the Assignor and Assignee sign and there is a description of the intellectual property.

In terms of maintenance and renewal of trademarks, U.S. extensions of protection must be both maintained and renewed, similar to national U.S. trademark registrations. However, the International Registration, along with all the individual country extensions, must be renewed centrally with the World Intellectual Property Organization (WIPO). In conclusion, while the U.S. trademark system shares the principle of territoriality with other countries, it differs in terms of how trademark rights are established, the form of trademark assignment, and the process of maintenance and renewal of trademarks

Here are some key points to consider:

  1. Priority and Use Requirements:
    • In the US, trademark rights are established based on actual use in commerce, rather than just registration.
    • Foreign applicants may need to provide evidence of use in the US or have a bona fide intent to use the mark in the US.
    • This differs from some countries where trademark rights are based solely on registration.
  2. Classification System:
    • The US uses the Nice Classification system, which categorizes goods and services into different classes.
    • Some foreign countries may use different classification systems, requiring careful classification of goods/services for the US application.
  3. Specimen Requirements:
    • The US requires specimens showing actual use of the mark for each class of goods/services.
    • Foreign applicants may need to create or adapt product specifically for the US market, since the specimens should be English and must be sold in the US or to Americans.
    • Foreign applicants who enter the US through the Madrid Protocol do not need to show use in the US until the first renewal (5.5 years after registration) but must have a bona fide intent to use.
  4. Madrid Protocol
    • Allows protection of a foreign trademark in the US through a streamlined process
    • Not the cheapest way or fastest to file in the US but has the benefit of allowing a trademark registration without use in the US.
  5. Language Requirements:
    • All filings and correspondence with the USPTO must be in English.
    • Translations of foreign documents may be required, adding additional costs.
  6. Ownership and Assignment Issues:
    • Ownership of the mark must be clearly established, and assignments properly recorded.
    • Different rules for determining ownership and validity of assignments may apply compared to the home country.
  7. Renewal and Use Requirements:
    • The US has strict requirements for maintaining and renewing trademarks, including declarations of continued use.
    • These requirements may differ from the home country, necessitating careful monitoring and compliance.
  8. Legal Representation:
    • Foreign applicants may be required to engage a licensed US attorney to represent them before the USPTO.
    • This can add additional costs and complexity to the process.
  9. Costs and Fees:
    • Filing fees and other costs associated with US trademark applications and maintenance can be higher than in some other countries.
    • Foreign applicants should factor in these expenses.

While many principles of trademark law are similar across jurisdictions, the specific requirements, procedures, and costs can vary significantly. It is advisable for foreign entities to seek guidance from experienced US trademark attorneys to navigate the process effectively and avoid potential pitfalls.

Madrid Protocol for US national entry

It's worthwhile focusing on the Madrid Protocol, which is one of the most common ways foreign applicants enter the US with a trademark application. The Madrid Protocol is an international treaty that allows trademark owners to seek protection for their marks in multiple countries through a single application filed with the World Intellectual Property Organization (WIPO). Here's how it works to protect a trademark in the United States:

  1. Home Country Application: A trademark owner must first register their mark in their home country or regional office (e.g., the European Union Intellectual Property Office). This established registration serves as the basis for the international application.
  2. International Application: The trademark owner can then file an international application through WIPO, designating the countries (including the United States) where they want to protect their mark. The US mark cannot go outside the scope of the foreign application it is based on - the goods and services must match, and the trademark must match.
  3. Examination by USPTO: The U.S. Patent and Trademark Office (USPTO) will examine the international application as if it were a regular national application filed directly with the USPTO. The examination process follows the same rules and procedures as a nationally filed application.
  4. Refusal or Approval: If the USPTO finds no grounds for refusal, the mark will be published for opposition and, if no opposition is successful, will be registered and protected in the United States. However, if the USPTO finds grounds for refusal, it will issue a notification of refusal.
  5. Ongoing Maintenance: Once registered, the trademark owner must follow the same maintenance and renewal requirements as a nationally registered mark, including filing periodic declarations of use and renewing the registration every 10 years.

Key Benefits of the Madrid Protocol:

  • Simplifies the process of seeking protection in multiple countries through a single application.
  • Reduces administrative costs and effort compared to filing separately in each country.
  • Allows for centralized management and renewal of international registrations through WIPO.

However, it's important to note that the Madrid Protocol does not create a global trademark registration. Each designated country still examines and decides on the trademark application based on its own laws and regulations.

While the Madrid Protocol streamlines the process, trademark owners may still benefit from consulting with local legal experts in the designated countries, including the United States, to ensure compliance with specific national requirements and to address any potential issues or objections raised during the examination process.

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