There are a number of intellectual property myths that attorneys hear over and over again. Periodically, we’ll feature some of these myths and examine the reality.
Myth: Because my company sells only in the United States, we don’t need to worry about protecting our trademarks internationally.
Reality: Although trademark rights are territorial in nature, in some countries use is not required to obtain rights. In these countries, notably including China, trademark priority goes to the first person to file an application (often called “first-to-file” jurisdictions), regardless of whether or not the applicant is using or even plans to use the trademark in that country.
Consider, for example, a company located in the United States that sells its products exclusively in the United States, but manufactures goods or has suppliers in China. It would be possible for a third party to register the U.S. company’s trademarks in China and then bring or threaten a lawsuit. It might be that a Chinese court would dismiss these claims, but many trademark owners decide that obtaining foreign trademark registrations in first-to-file jurisdictions is a worthwhile investment to reduce the risks of facing a foreign trademark threat or lawsuit.
For another example, consider a company that sells a popular consumer product in the United States. Even if the company has no activity in China and never intends to — it may want to obtain a Chinese trademark registration as a way to try to deter counterfeiters.
A trademark attorney can provide advice on whether it is possible to obtain trademark protection in a foreign country without use in that country and the benefits it may provide based on individual business needs.