Registration is an important step in protecting trademark rights. Generally, a trademark registration creates a presumption that the registrant is the owner of the mark, that the mark is distinctive as applied to the registrant’s goods and/or services, and that the registrant has the exclusive right to use that mark on the goods and services. Having a registered trademark is a significant benefit when enforcing trademark rights.
Trademarks are Geographically Limited
A key concept in understanding registration is that trademark registrations are territorial. With the exception of the European Union (where a registration covers all countries in the European Union), the protection of a registration extends only to the country which issued the registration. A registration in the United States is of no help if infringement occurs in another country.
First-to-Use and First-to-File Countries
Because trademark rights are territorial, it is critical to know whether the country follows the “first-to-use” or “first-to-file” rule.
In a “first-to-use” country, trademark rights begin when an entity starts using the mark on goods or services, even without registration.
In a “first-to-file” country, the registration is given to the entity which is first to file the application, regardless of whether the entity is using the mark on goods or services.
With the notable exceptions being the United States and Australia, most countries are “first to file”. This has important implications on where to register the trademark.
Where to File—Consider Other Countries
Even though you intend to sell goods in the United States, consideration should be given to registration in “first to file” countries where the products or services may be sold in the future. This is particularly important when products are sold on Internet platforms: The mark should be registered in those countries where there are or will be significant sales. Unscrupulous “trademark trolls” often register marks in first-to-file countries when a product is sold on the Internet. Some trademark trolls scan for newly-filed applications in the United States, and then register the mark in a first-to-file country. The cost of registration is small when compared to the considerable expense and effort required to obtain a registration if another user has registered the mark in a first-to-file country.
We have filed applications to register trademarks not only in the United States and with the European Union Intellectual Property Office (registrations are valid in EU countries), but in over 20 other countries including Canada, China, Hong Kong and Macau SARs, Japan, South Korea, Taiwan, Thailand, Singapore, the Philippines, Australia, New Zealand, Russia and Saudi Arabia. Our expertise includes advising clients on options for expanding the scope of trademark protection in international applications, and tailoring the application to conform to local requirements.