International Trademark Protection

Many businesses sell goods and services not only in the United States but in various foreign countries.  Securing trademark protection in foreign countries is therefore frequently important for those businesses that are international in scope.  While the United States recognizes common law trademarks, many foreign countries do not.  Further, a U.S. trademark registration provides protection only in the United States, and registration of a mark in the United States is no guarantee that the mark may be used or registered in any foreign country. 

Securing registration of a trademark in a foreign country entails filing an application in the country, typically within six months of filing the corresponding U.S. application.  Some countries have banded together so that a single application may be filed that hopefully will result in protection in all member countries.  The European Community has established the Office of Internal Harmonization in the Market (“OHIM”) in order to register trademarks throughout the European Community.  An application filed with OHIM will be examined and prosecuted much like an application filed in the United States, and also will be subject to opposition and cancellation.  Unlike the United States, an application filed with OHIM need not be in use prior to grant of a registration. 

Foreign trademarks also need to be renewed periodically, with each country specifying the initial term of a registration.  Each country also has its own requirements concerning use of the mark and requirements for maintaining the registration. 

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