Is my trademark enforceable outside the US?

Minneapolis trademark attorney Jennifer Debrow discusses trademark protection outside of the United States.

Contact Jennifer Debrow

Email: [email protected]

Phone: (612) 632-3357

Transcript:

Trademark rights are territorial, so if you have a trademark in the U.S., either through common law rights or through federal registration, that trademark is not enforceable outside the U.S. Your rights are really limited to the U.S. Now, there are some jurisdictions outside of the U.S. where, if you were using the mark in that country, you might have some common law rights, but the majority of other countries do not have common law rights. They require you to register the mark in order to have rights, so it’s sort of the opposite of the U.S.

We call the U.S. a “first-to-use” country; the first person to use the has the rights. Most other countries are “first-to-file”; the first person to file the application has the rights. So it is very important, if you might use your mark abroad or if you wanna prevent others from using your mark abroad, to file registrations abroad, and every country – nearly every country in the world has a trademark system very similar to the U.S. It’s a type of law that has been standardized around the world to a large extent, so the process will be similar, the application process, the trademark agency, the fees, and the cost, will be similar to the U.S.