Foreign companies that already have a registered trademark in another country and wish to apply for their mark in the United States may have a small advantage when filling out their application with the United States Patent and Trademark Office (USPTO).
Here in the United States, trademarks are based on use, and you must show that you are using the mark in commerce for your application to be considered for registration. The good news for overseas trademark holders seeking a US trademark, however, is that they can proceed on the grounds that they own a foreign registration and do not need to illustrate use in US commerce.
The foreign registration advantage is only temporary, however, and eventually, use of the mark in commerce must be proven by the foreign entity when it’s time to renew registration at the five and ten-year points. It is also important to note that the registration may be subject to attack in a cancellation proceeding if the foreign company does not use the mark in the US.
Keep in mind, however, that just because the application process is a bit more direct for foreign trademark holders does not mean that it’s easy or without roadblocks. There is still the chance that the mark will be contested, and questions of use may come into play if another believes they already hold rights to the mark. Likewise, applications for trademarks in the United States may just be more complicated than in other countries, specifically when it comes to understanding the ways that goods and services must be described and the classes they are assigned to.
The easiest way to navigate such challenges and move your desired trademark through the application faster and with less stress is to work with a trademark attorney here in the United States. If you are a foreign company and you already hold a trademark outside of the US and you’d now like to know your options for securing your marks here in the states, our attorneys can help. To schedule a consultation, simply contact 888-666-0062 to schedule a consultation.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.