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Global Perspective On Filing Trademark Registrations
In the United States, trademark rights are created through use of a mark and perfected by obtaining a federal registration with the U.S. Patent and Trademark Office (USPTO). The entertainment industry is a global business, but 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 United States, 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, entertainment companies that have potential for growth outside of the U.S. need to proactively plan for and obtain trademark protection in foreign territories. Below we discuss important differences that brand owners and their counsel should consider when seeking trademark protection domestically and abroad, filing timelines to be aware of, and provide key takeaways and pitfalls to avoid.
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.
Being the first to obtain trademark rights in a certain territory is known as having "priority." In the United States, a senior user can assert priority rights to object to a junior user's registration (for up to five years from the date of that registration) of an identical or a confusingly similar mark, even if the senior user never obtains a federal trademark registration. While a federal trademark registration confers many benefits, including a presumption of trademark validity and the possibility for a trademark to become incontestable, the ability to rely on common law (use-based) trademark rights offers substantial protection to even an unregistered trademark owner.
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