How to Protect Your Trademark in Foreign Countries

Serving New Braunfels, San Marcos, and Seguin with Exceptional Estate and Business Planning

By Beverly Davidek

Nov 15
Davidek Law

Globalization and digital technology have made the world seem like a much smaller place. And though the enhanced ability to reach international markets can be a major advantage for your business, it also opens up new complications with intellectual property rights.

This is especially true when it comes to foreign trademark infringement. Trademarks are used to protect a word, phrase, symbol, design, or other distinguishing feature that identifies your product or service. Trademarks allow you to exclude others from using the same—or highly similar—branding as yours.

By registering your trademark with the U.S. Patent and Trademark Office (USPTO), you can protect your brand within the borders of the United States. However, having an American trademark will do little to stop competitors and scammers in foreign countries. Indeed, a federally registered U.S. trademark does not entitle you to sue a Chinese company in a Chinese court, even if it used your exact name and/or logo.

So what can you do to prevent your company’s trademark from being infringed upon in other countries? Big-name companies have lawyers around the globe policing against such violations, but if you have a smaller business, you still have ways to protect the branding—and customer goodwill—you’ve worked so hard to cultivate.

The Madrid connection

One way you can protect your brand is by registering your trademark abroad. You can contact the intellectual property offices in each country where you’re seeking protection to learn how to apply for trademark protection there.

However, a much easier way to achieve protection in many of the largest countries is to register your mark with the International Bureau of the World Property Intellectual Organization (WIPO). WIPO currently has 117 member countries, who have all joined the Madrid Protocol, one of the largest treaty schemes governing trademark rights in the world. 

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Once you’ve registered your trademark with the USPTO, you can file for an international trademark with the WIPO. Such registration provides protection in each of the member countries who’ve agreed to enforce trademark rights across their borders.

Catching counterfeiters

Though it’s certainly important to stop others from infringing on your trademark in foreign countries, you might face a greater threat from foreign counterfeiters who import their fake goods into the U.S.

You’ve undoubtedly heard the stories about Rolex watches being counterfeited and sold on the black market in the U.S. But you might be surprised at the number of other knock-off products that enter our borders every year.

In order to help prevent counterfeit versions of your goods from hitting the streets, you should register your trademark with the U.S. Customs and Border Protection (CBP). If you have a valid U.S. trademark, you can register it on the CBP’s Intellectual Property Rights e-Recordation Website.

By doing so, you’ll qualify for trademark enforcement from the CBP, which is tasked with stopping the importation of counterfeit merchandise. If any obviously infringing imports are discovered, the CBP will seize the shipment and notify you of the confiscation.

The Lanham Act

One final way you can fight foreign trademark infringement is by bringing a lawsuit in U.S. Federal Court under the Lanham Act. The Lanham Act is a federal trademark statute that creates a civil cause of action for trademark infringement.

Although the jurisdiction of the U.S. Federal Courts is limited, the extraterritorial arm of the Lanham Act has been increasingly applied to protect trademarks from infringement that occurs almost entirely in other countries. This makes the Lanham Act a highly effective method to combat foreign trademark infringement here in the U.S., rather than trying to navigate the laws and courts of a foreign country.

For the Lanham Act to apply, the infringement must have some connection to U.S. commerce. However, this can be something as simple as the infringer shipping products or materials through the U.S. or even exporting products from the United States. Plus, the Lanham Act has statutory penalties, so fines can be imposed—up to $100,000 for each infringing act—even if there are no actual damages.

The courts use a variety of tests to determine if the protections afforded by the Lanham Act apply, so if you think your trademark is being infringed upon in another country, contact me to see if any action can be taken in American courts.

Protect your brand and your bottom line

Of course, enforcing your trademark doesn’t necessarily mean taking the infringing party to court. Litigation, especially international litigation, is quite time consuming and expensive, so unless your business is being seriously impacted by foreign infringement, you’ll probably want keep litigation a last resort.

Fortunately, there are many other options for enforcement, from sending a polite cease and desist letter to allowing the offender to pay a nominal licensing fee. And you never know when what seems like a negative event can turn into a positive.

If you’ve put substantial time and money into your branding, you should carefully consider all the ways you can protect your investment. I can help you find the most effective and efficient methods for safeguarding your intellectual property, both in the U.S. and abroad.  

This article is a service of Beverly R. Davidek. I don’t just draft documents; I ensure that families and business owners make informed and empowered decisions about life and death, for themselves and the people they love. I also offer a LIFT Start-Up Session™ or a LIFT Audit for an ongoing business, which includes a review of all the legal, insurance, financial, and tax systems you need for your business.