March 03, 2015

Trademark Territoriality – Where You Use Your Mark Still Matters

by Guest Blogger

How do you know where to register your trademark?

Trademark rights have been traditionally tied to geography. In the U.S. and in many other countries, a trademark owner only has rights in a mark to the extent she has used the mark in the country where rights are sought. There were always exceptions "around the border edges" for example, where the reach of a mark used in Canada transverses the U.S. border because of overlapping advertising and trade channels â think Niagara Falls.

As geographic borders became less of a barrier to trade and as diverse territories harmonized protection regimes, the principle of trademark rights being tied to geography began to fade. A U.S. trademark owner today can file an application under the Madrid Protocol â an international trademark treaty â and request protection of that mark in over 90 different countries â from Albania to Zimbabwe. Assuming the U.S. trademark owner's application is successful before the U.S. Patent and Trademark Office, an applicant will not have to prove use of its mark in these foreign jurisdictions to receive the benefits of registration.

This may not be the end of the matter however. In many countries (including the U.S.), a trademark registration may be vulnerable to challenge and may ultimately be cancelled if the registration owner cannot show that he has used the mark to sell goods or services in the country where protection was obtained.

Recently, the U.S. District Court for the Eastern District of Virginia reaffirmed the basic territoriality principles in Belmora LLC v. Bayer Consumer Care AG, Civil Action No. 1:14-cv-000847-GBL-JFA (ED Va., February 6, 2015). Both parties asserted prior rights in the FLANAX naproxen sodium product in the United States. Bayer argued that its famous FLANAX mark in Mexico should be afforded rights in the U.S. as some kind of a famous "world mark" (relying in part on language of an international Paris Convention).


Reversing the U.S. Patent and Trademark Office Trademark Trial and Appeal Board, the District Court held that the owner of a foreign mark, even a famous one, that is not registered in the United States and that has not been used in the United States cannot assert priority over a mark that is used and registered in the United States.

In forming an international trademark protection strategy, your company's current geographic product footprint and its business plans for expansion (or contraction) of that footprint must inform that strategy at every turn.