Domestic Trademark Registrations Are Not Enough: The Ins and Outs and of Protecting Trademarks Internationally

The Association of Corporate Counsel - Greater Philadelphia (ACC)


Description: This session will identify the reasons for securing international trademark rights, the various tools and approaches for doing so, and the costs that can be expected when implementing a plan for securing international trademark protection.  Securing domestic trademark protection through the registration of trademarks in the U.S. Patent and Trademark Office is essential to any business venture.  An often overlooked trademark issue, however, is securing protection of trademarks in foreign countries where products are manufactured or sold or where services are provided.   

There are two primary reasons to register trademarks internationally.  

  1. The first is to establish ownership of that mark and thereby enable the registrant to control use of the mark, police infringements, and take advantage of the benefits that accrue to the owner of a mark (the offensive basis for registration).   
  2. The second reason is to prevent others from acquiring rights in your mark and thereby gaining the ability to interfere with your use and enjoyment of your mark in that country (the defensive basis for registration).  In most countries ownership of a mark is established by registration and not use of a mark and therefore preventing the registration of an important mark by others in key countries can be of significant importance even if a company does not intend to actively use your mark in those countries.

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