U.S. Trademarks Filed in Foreign Countries

A U.S. trademark registration does not prevent others from filing for the same mark in a foreign country. Trademark rights are typically territorial, meaning they only apply within the country where they are registered. Therefore, securing your trademark in countries where you plan to conduct business can be crucial to your branding strategy.

Filing Trademarks Internationally

You must file a separate application in each jurisdiction where you seek trademark rights. There are two main routes for seeking trademark rights internationally.

Individual Country Application

This method involves submitting separate trademark applications in each country where trademark rights are sought. While offering flexibility, this method can be costly and time-consuming and requires adherence to each country's unique and varied requirements. Each trademark application will undergo examination and prosecution within that country based on that country's requirements and existing registrations.

International Registration Application

The Madrid Protocol provides for extending a base trademark registration or application to multiple member countries using a single international registration application. This streamlined approach reduces administrative burdens and costs of seeking trademark rights in multiple foreign jurisdictions. Applicants must designate in which member countries they are seeking to extend the rights of the base trademark registration or application. Once the international registration application has been approved, it is forwarded to each selected member country, where it will be examined and prosecuted. The member countries have 18 months to examine the application in accordance with their national standards.

Dealing with Pre-existing Foreign Trademarks

Filing as soon as possible is essential to secure trademark rights in competitive markets. Many systems permit a priority claim, allowing applicants to benefit from their original U.S. filing date. Foreign applications must be filed for priority claims within six months of the U.S. filing date. Filing after six months forfeits the ability to claim priority. An earlier U.S. filing date can predate attempts by others to register your mark in foreign countries using the submission date of the base trademark registration or application. 

Additional Considerations for International Filing

Local Regulations: Each country has unique rules and regulations for trademark registration. Each trademark application will be examined according to the country's national standard.

Language Requirements: Some countries require documents in their official language, necessitating translation services.

How TCP Law Can Help

Expanding trademark protection internationally is crucial for global operations. Though complex, understanding your options and seeking professional guidance can simplify the process. Protecting your brand globally is a valuable investment in securing intellectual property across borders.

A trademark attorney at TCP Law can help select the right method for seeking trademark rights in foreign countries and ensure that the chosen method is implemented correctly.

For assistance with establishing trademark rights in foreign countries or with any other trademark issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.