If you’ve discovered someone is using your desired trademark in another country, but you’re focused on doing business in the United States, there’s generally fine. Trademark rights are territorial, which means rights in one country typically don’t prevent registration in another.

Understanding Territorial Rights

Think of trademark rights like real estate – owning property in Canada doesn’t give you any rights to a similar property in the United States. The same principle applies to trademarks. A company using your desired mark in Japan, Brazil, or Germany generally can’t block your registration in the U.S. if they’re not using the mark here.

Important Exceptions to Consider

However, there are some situations where foreign use could impact your U.S. trademark plans:

Famous Marks

If the foreign mark is genuinely famous in the U.S. (think VODOFONE  or CARREFOUR ), it might be protected here even without U.S. registration.

Prior U.S. Use

If the foreign company has already expanded to the U.S. or filed a U.S. trademark application based on their foreign registration of intent to use, they may have priority rights here.

International Applications

If they’ve filed an international application claiming priority in the U.S., this could affect your ability to register.

Planning for the Future

Even if you can register your mark in the U.S., consider these strategic questions:

• Do you might want to expand internationally later?
• Could the foreign company enter the U.S. market in the future?
• Might your customers be confused by two similar brands, even in different countries?
• Will you manufacture the product in a foreign country where this other owns a registration?
• Even though they are in a foreign country will their marketing on the internet cause issues for your marketing efforts in the US?

The Bottom Line

Just because someone is using your desired trademark abroad doesn’t mean you can’t build your brand here in the United States. However, navigating international trademark considerations can be complex. If you’re wondering whether foreign use of a similar mark might affect your U.S. trademark plans, let’s discuss your specific situation. Call us today at (888) 666-0062 or click here to schedule your initial Discovery and Strategy Session online. We can help you evaluate any potential conflicts and develop a strong trademark strategy for your business.

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.