How do I register a foreign trademark in the United States?

A trademark is something which signals to consumers who manufactured a product. In the United States it is not necessary to register a trademark to begin using the trademark in the marketplace, but registration of a trademark in the United States is a good idea. Registering a trademark in United States strengthens the rights associated with the trademark. The advantages of registering a trademark in the United States include notice to the public of the registrant’s claim of ownership of the mark, a legal presumption of ownership nationwide, and the exclusive right to use the mark on or in connection with the goods listed in the registration.

Registration of a trademark does not automatically transfer around the globe. A trademark owner that wants to protect their trademark in multiple countries must get their trademark registered in each country. The United States Patent and Trademark Office reviews trademark applications and register trademarks which meet all the requirements for registration in the United States. A trademark owner that does not operate in the United States can use their home country trademark registration to register their trademark in the United States. Trademark owners from outside the United States actually have some advantages over trademark owners that operate in the United States.

If a trademark owner from outside the United States wants to register their trademark in the United States, the first step is to file a trademark application with the United States Patent and Trademark Office. The trademark application must include a basis for registration. The basis for registration can be actual use of the trademark in the United States, an intent to use the trademark, or a foreign trademark registration from the trademark owner’s country of origin. A foreign trademark application can be used as a basis if the United States trademark application is filed within six months of the foreign application. Eventually the foreign application must be registered. The trademark owner must submit a certified copy and a translation of the registration obtained in the trademark owner’s country of origin.

The foreign registration does not have to be included with the United States trademark application, but it must be submitted before the trademark can be registered in the United States. The foreign registration must be issued by a country that is a party to a treaty or international agreement with the United States. The foreign registration must be from the trademark owner’s country of origin, must owned by the party filing the United States trademark application, the trademark in the foreign registration must match the trademark in the United State trademark application and the goods outlined in the foreign registration must match the goods in the United States trademark application.

If the United States trademark application meets all the retirements for filing, it will be assigned a serial number and application process will proceed like a domestic trademark application. An examining attorney at the United States Patent and Trademark Office will be assigned to review the application. After the examining attorney reviews the trademark application and finds no reason to refuse registration, the trademark will be published for opposition. If no opposition to registration is filed within three months of publication then the trademark will be registered.

A trademark owner’s responsibilities do not stop after a trademark is registered. To maintain trademark registration a trademark owner will need to prove use of the trademark during the sixth year after registration and again at the time of renewal of the registration after 10 years.

Every trademark application is different. If you want to register your trademark in the United States based on a trademark registration in your home country it is best to review the facts with an experienced trademark attorney.

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