If you are contemplating the expansion of your business into new markets outside the United States, consider protecting your trademarks or brands in those markets before using them there. Trademark rights are territorial, so having trademark rights in one country or jurisdiction does not mean you have those trademark rights in other countries or jurisdictions. Thus, the establishment of trademark rights in the United States for a particular mark that identifies the source or origin of your goods or services does not mean you have any trademark rights in that mark in other countries, such as in Mexico or Canada for example. The expansion of trademark use into new countries, whether the mark is to be used on packaging or in advertising, requires the consideration of whether someone else already has trademark rights in that country that could preempt your use of the mark and the consideration of whether to seek registration of the mark in that country with a trademark application.
Since having established trademark rights in the United States does not guarantee that the mark is freely available for use or registration in another country, a trademark clearance search for a particular country or region is often advised before using the mark in that jurisdiction. Clearance searches are conducted to help avoid the chance of facing a trademark infringement dispute with a third party who has rights to the same mark or one that is confusingly similar in the country. Such clearance searches provide some guidance on the risks associated with the use of a certain mark in a country before investing significant time and money on a brand in a new jurisdiction.
Assuming a clearance search does not identify unacceptable risks of a third party objecting to the use of a mark in a country, the next consideration is whether to apply to register the mark in that country before any commercial activity occurs. In the United States, rights in a trademark generally belong to the first to use the trademark in commerce. The United States and other countries like it are often broadly called first-to-use countries and examples of such first-to-use countries are identified in the right-hand column of the chart below.
However, many foreign countries give trademark rights to those who are the first to register the trademark, even if they were not the first to use the mark. These countries are broadly called first-to-file countries and examples of such first-to-file countries are identified in the left-hand column of the chart below.
| First-to-File Countries | First-to-Use Countries |
| European Union | United States |
| China | Canada |
| Taiwan | Australia |
| South Korea | India |
| Japan | |
| Mexico | |
| Argentina | |
| Brazil |
As shown, first-to-file countries include important trading partners, including Europe, Mexico, and China. One of the dangers of a first-to-file country is it provides an opportunity for an unscrupulous third party to register a trademark in the country, even if they have no plans to use that trademark, and prevent others from obtaining their own registration for the mark or even block products bearing the mark from entering that country. So, seeking a trademark registration early, even well before first use, in a first-to-file country may be advisable to avoid a third party from beating you to a filing to obtain commercial advantage or leverage.
If you have any questions about how to approach IP protection in other countries, please contact a member of the Harter Secrest & Emery Intellectual Property group.