Trademark
Trademark rights are territorial. Therefore, trademark rights in your home country do not automatically apply in the US Trademark rights in the US are created through use. The first to use a trademark on goods (or a service mark for services) sold in interstate commerce will generally maintain the exclusive right to use the trademark on those goods. While registration with the US Patent and Trademark Office is not necessary to establish trademark rights, it provides significant benefits and is strongly encouraged.
To get started here are the basic steps that all entrepreneurs should consider:
- Determine whether your trademark is already in use. Your first step in entering the US market is to determine whether your product’s trademark is being used in the US Conducting a trademark search with a US attorney will determine if your product’s trademark is available.
- Register your trademark. If the trademark is available, register it with the US Patent and Trademark Office (USPTO). Although not required, registration provides several advantages and can give you an early priority date should someone else use the trademark. To begin the registration process before selling your products in the US, you have several options:
- Section 44(e) application: A foreign company that has registered the trademark at home may be entitled to a US registration known as a “Section 44(e)” registration before using the trademark in the US The owner must, however, have a good faith intention to use the trademark in the US
- File an “intent-to-use” application. This is available to individuals and businesses that have a good faith intention to use a trademark in the US, but have not yet sold products bearing the trademark in the US Unlike Section 44(e), a registration based on intent-to-use will not be issued unless the trademark is used on goods within a specified time after the application is approved.
- Section 44(e) application: A foreign company that has registered the trademark at home may be entitled to a US registration known as a “Section 44(e)” registration before using the trademark in the US The owner must, however, have a good faith intention to use the trademark in the US
- Enforce your trademark. US trademark owners must enforce their rights to avoid “abandonment.” Unauthorized use of the same or a confusingly similar trademark can lead to loss of trademark rights. Many US trademark owners use “watch services” to discover potential trademark infringements. If an infringement is discovered, a “cease and desist” letter should be sent. In some cases, it is necessary to sue for trademark infringement. If infringement is proven, the trademark owner may recover its damages, the infringer’s profits and, in certain circumstances, triple damages and attorneys’ fees.
A registered trademark may also be recorded with US Customs and Border Protection, which will to exclude counterfeit and unauthorized genuine (gray market) goods from importation into the US Such Customs protection may be limited, however, if the owner of the US trademark is a foreign company or a US company owned or controlled by a foreign company that owns the trademark outside the US.