A trademark is a name, logo, slogan or design that distinguishes the source of a company’s goods or services from those of others. In the U.S., trademark rights are created through use of a mark and perfected through obtaining a Federal Registration with the United States Patent and Trademark Office (USPTO). Many U.S. brand owners do not realize that their valuable trademark rights stop at the U.S. border. In order to be protected outside of the U.S., trademark rights must be obtained separately across territories. Further, eligibility for trademark registration as well as the standard for trademark infringement differs in every country. Accordingly, companies that have potential for growth outside of the U.S. need to proactively plan for and obtain trademark protection in foreign territories relevant to their specific industries. Below we discuss important differences that brand owners and their counsel should consider when seeking trademark protection within the U.S. and abroad, filing timelines to be aware of, and provide key takeaways and pitfalls to avoid.

First-to-Use vs. First-to-File Territories and Establishing Priority

The United States (along with Canada, Australia and a few other countries) is a “first-to-use” territory. This means that trademark rights begin and belong to the first entity that uses a specific trademark in interstate commerce. Merely coining a brand name or incorporating one’s business under a tradename does not sufficiently satisfy the use in commerce requirement—the trademark must actually be used in connection with the promotion or sale of goods and/or rendering of services in order to qualify as trademark usage.