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PTO to Trademark Owners: Register Your Marks Overseas for Protection Overseas

On Friday, I attended some of the “Anti-Counterfeiting & Piracy 2007” program co-sponsored by the U.S. Patent and Trademark Office and U.S. Chamber of Commerce. (STL preview of the event here.) The program took place in Bellevue as part of the groups’ national road show on the issue.

Washington’s attorney general Rob McKenna added some local flavor. He characterized Washington as the nation’s most trade-dependent state and said a number of local companies have been damaged by counterfeiting. He went on to describe a recent meeting he had with other state attorneys general that emphasized that counterfeiting goes beyond pirated music CDs and software. The Seattle Post-Intelligencer quoted him as saying: “When the chamber representative passed around the table counterfeit automobile brake pads and counterfeit medical supplies and talked about the Federal Aviation Administration’s estimate that something like 2 percent of airplane parts are counterfeit, they really got our attention.”

This morning I checked out the CD with handouts from the event. One contains a talk entitled “Trademarks: Identifying & Protecting Your Rights” by Susan Anthony, an attorney-advisor in the PTO’s Office of International Relations. She suggests that trademark owners concerned about protection abroad start simple: recognize that trademark law around the world can be different than it is here. Most importantly, she said, trademark owners seeking protection abroad should get their marks registered in the country where they will be used.

“If you take nothing else away from this presentation, take this away: trademark rights are territorial. That is, trademarks must be protected on a country-by-country basis. We’re spoiled in the United States. We put on our American cap and we think that the world thinks like Americans. We’re spoiled by the fact that registration is not required in the United States. Many of us perhaps are not aware of registration, but we have rights – we are protected in our unregistered marks pursuant to the common law. But that is not so in most of the countries of the world, where a mark must be registered in order to have any rights in that country. Most countries follow a first-to-file rule, which means that protection is granted to the first party who files an application and receives a registration. Again, that is different from the United States, which is a first-to-use country, and there are several other countries – just a handful – that also are first-to-use. … [Y]ou must search and file in each country in which you want trademark protection, in which you wish to sell your goods and services.”

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