11
Jul/05

Homeland Piracy: Use In The U.S. of Non-U.S. Marks


WSJ (free for a change) article on piracy in the U.S. of non-U.S. brands (in this case, Mexican and Filipino).

Quibble: The statement that US trademark applications can go through WIPO (which I would describe as a NGO and not an advocacy group) is correct but mis-leading as the procedure is only available to entities that have a ‘significant establishment’ in a country that’s a member of the Madird Protocol (list of Madrid members here). Neither Mexico nor the Phillipines is.

More than a quibble: the article leaves the impression that if the non-U.S. company hasn’t obtained a U.S. registration, then it is out of luck.  While you absolutely want to register your trademark in the U.S. to perfect your rights (as quickly as possible), protectable trademark rights arise in the U.S. from use in interstate commerce or international commerce with the U.S.

Even prior to the controversial Casino du Monte Carlo decision which radically expanded the definition of ‘international commerce with the U.S.’, the definition was sufficently broad enough that a non-U.S. entity, faced with the use in the U.S. of its trademark, should ask U.S. counsel to evaluate whether its activities may give rise to U.S. common law rights.  In the age of the Internet, a non-U.S. company, even one without a U.S.-based distributor, may well meet the threshold for protection.

Additionally, in some rare cases, a non-U.S. mark not in use here may be eligible for protection as a famous mark (the recent Cohiba case at least leaves the door open for such a theory).

As to filing for trademark protection, do it early and often.  Even if the ‘core’ brand covers a non-U.S. location-based service (hotel, restaurant, sporting event, festival),  merchandising, or information services bearing the mark, may well be provided in international commerce with the U.S., thus satisfying the use requirements for a U.S. registration.

 

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