Comparative Guides
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Results: 4 Answers
Trademarks
10.
Protection of foreign trademarks
10.1
Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
 
United States
Although a trademark owner must use the mark in US commerce in order to have trademark rights, the owner of a foreign trademark may, in certain circumstances, have standing to sue a third party that is using its mark in the United States for unfair competition under Section 43(a) of the Lanham Act (15 USC §1125(a)). The US Court of Appeals for the Fourth Circuit held in 2016 that the owner of a trademark used in Mexico would have standing to bring such a claim if the defendant’s use would deceive immigrants and others crossing the US-Mexico border who were familiar with the plaintiff’s branded product in Mexico (Belmora LLC v Bayer Consumer Care AG, 819 F3d 697 (4th Cir 2016)). This is an unusual case, and the decision recognising the rights of the foreign trademark owner may rest on the close social, familial and commercial ties between Southern California and Mexico, and the fact that the alleged infringer had evidently sought to capitalise on the reputation of the plaintiff’s brand in Mexico by targeting Mexican immigrants and Mexican-Americans in California.

For more information about this answer please contact: John Crittenden from Cooley LLP
10.2
Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
 
United States
Yes. Although the US Patent and Trademark Office does not require proof of use of the mark in US commerce before granting registration of a mark based on a foreign or Madrid registration, the trademark owner must submit proof of use as noted in questions 8.1 and 8.2 in order to maintain or renew the registration. In addition, the foreign applicant must have a bona fide intent to use the mark in US commerce for all goods or services identified in the application; otherwise, the application may be void. The Trademark Trial and Appeal Board will refuse registration of a foreign-based application where it determines in an opposition that the application lacked such bona fide intent.

For more information about this answer please contact: John Crittenden from Cooley LLP
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