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Trademark Myth #3: Other countries/individuals will respect U.S. trademark rights

A United States trademark registration will not necessarily protect your trademark rights in another country.  Trademark registrants and applicants who do business internationally should diligently and appropriately protect their intellectual property overseas. International trademark owners who fail to do so subject themselves to intellectual property right violations.

China is a hotbed of Intellectual property right violations.  China’s trademark system is unlike America’s in that it is a “first-to-file” system.  China is notorious for professional squatters, i.e. companies, trademark agents and individuals that file the unregistered trademarks of others in bad faith with the sole intent of holding them ransom. 

Prominent companies and even law firms have dealt with their trademarks being held hostage in China.  Apple had to shell out $60 million for a settlement to get the use of its iPad trademark in China in 2012.  Pro basketball player Michael Jordan won a ruling in 2016 giving him back the rights to his own name from a squatter from China’s highest court, the Supreme People’s Court of the People’s Republic of China, after previously losing the fight.  Even law firms are not immune.  A Chinese company registered the trademark “Squire Patton Boggs” and demanded $450,000 for the rights to the name.  A Chinese arbitrator ruled that Chinese company’s use of the .net domain and Chinese trademark for the name “Squire Patton Boggs” was valid and concluded that, unless the trademark was invalidated, it would be difficult for the international firm to show the Chinese entity should not be allowed to keep the domain.  Squire Patton Boggs later reached a deal with the Chinese company to gain possession of the Chinese trademark and the .net site.

As of February 2019, China Trademark Office (CTMO) published a draft regulation that attempts to allow trademark examiners to conduct some vetting of new applications to identify whether they belong to an illegal filing pattern, but the system still allows for abuse.

The Madrid Protocol offers a convenient and cost-effective system for international trademark registration. The Madrid Protocol allows a trademark owner or applicant the ability to seek registration in another participating country by filing a single application with the International Bureau of the World Property Intellectual Organization (WIPO). As of current, about 122 countries participate in the Madrid Protocol.

Filing a US trademark is the first step to protecting a trademark, but a U.S trademark registration alone does not protect trademark rights in another country.


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