Get your catchy domain at it.com

Is it possible to register a trademark in U.S. for non-U.S. citizen?

NameSilo

RU

I'm out of domaining. ~RusselAccount Closed (Requested)
Impact
2,951
Hello,

Does anyone know, is it possible to register a trademark in U.S. for non-U.S. citizen?

Thanks.
 
0 0
•••
The views expressed on this page by users and staff are their own, not those of NamePros.

archers

Account Closed (Disallowed)
Impact
42

jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
5,837
It depends on what you are trying to accomplish.

Can you file a standard US trademark registration application without doing business in commerce in the US under the mark? No.

However, in addition to the Madrid Protocol route mentioned above, you can file in the US under another treaty which allows reciprocal treatment for marks already registered in another country.
 

cmdomains

Established Member
Impact
234
^Do you mean if one doesn't reside/stay in US but have a business location there, then they can't? So the Madrid System is for that? Also, Does it matter whether whoever you assigned to run your business in US is a citizen or not?

Just butting in , i've been wanting to learn this for the longest time just been putting it on the sides.
It depends on what you are trying to accomplish.

Can you file a standard US trademark registration application without doing business in commerce in the US under the mark? No.

However, in addition to the Madrid Protocol route mentioned above, you can file in the US under another treaty which allows reciprocal treatment for marks already registered in another country.
 

jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
5,837
1. Citizenship has utterly nothing to do with whether one can register a trademark in the US.

2. Location of the business has nothing to do with whether one can register a trademark in the US.

Volkswagen, a German company run by Germans in Germany, was exporting and selling cars in the US, and had US trademark rights in "Volkswagen", long before they had any corporate or manufacturing operations in the US or any employees who were US citizens.

A mark for goods or services can be registered in the US if:

1. The goods or services are sold in the US, or

2. The mark is registered in some other country that is a signatory to a treaty providing reciprocal trademark rights in the countries participating in the treaty.

Now, #1 doesn't require that anything or anyone involved in running the business be in the US or a US citizen. If the goods/services are sold in the US, and if the mark is distinctive of those goods/services in the US, then the mark can be registered. Full stop. It's not about the company, the location of the company, or who runs the company. It's entirely about whether a mark is used for goods/services in the US.

Under #2, there are several treaties - the Paris Convention, the Madrid Convention, NAFTA, etc., which all have their various mechanisms for obtaining registration in the US.
 

cmdomains

Established Member
Impact
234
^Much appreciated info there. Thank you. Without polluting this thread with off-topics, I'll just ask my last few questions here:

"..and if the mark is distinctive of those goods/services in the US, then the mark can be registered."

The matter of distinctiveness is on Wikipedia. Though it sounds like an umbrella/broad term enough to require a lot of research, is it fair to say that the most important thing to note is whether a mark is 'inherently distinctive' or not?

There's also something about providing (or not providing) 'proof of acquired distinctiveness,' and wondering what forms of proofs would they be ? Any other case study resources out there other than these by Wikipedia?
 

jberryhill

Top Member
John Berryhill, Ph.d., Esq.
Impact
5,837
is it fair to say that the most important thing to note is whether a mark is 'inherently distinctive' or not?

Those are the easy ones. A term like "Xerox" is inherently distinctive, since it is an invented word having no other meaning than as a reference to that company.

There's also something about providing (or not providing) 'proof of acquired distinctiveness,' and wondering what forms of proofs would they be ?

It depends on the circumstances. The point is whether a term that is descriptive of the goods/services has become associated in the minds of relevant consumers such that it functions in the marketplace as an indication associated with a single source.

Take "American Airlines" - they're American and they are an Airline. The thing is, they've been doing it since 1939 and everyone knows that the term "American Airlines" means a particular carrier.

Same story with Coca-Cola - the original formulation was made with extracts of coca and cola. But they've been at it for more than 100 years, and everyone knows who they are.

Another one would be "International Business Machines". They don't come more descriptive than that, but only a fool would think that is anything other than a reference to IBM.

There is no fixed rule for "whether a mark has acquired distinctiveness", because whether it has or not is going to depend on whether evidence shows that people recognize it has a mark. A kind of threshold standard in the US is whether the mark has been used (a) continuously, (b) substantially exclusively, and (c) for at least five years, in commerce in the US.

In US trademark registrations, you'll often see the notation "2(f)" in the trademark record. Those registrations were allowed upon a showing of acquired distinctiveness, and if you dig into the file (under the "TSDR" button), you'll find whatever it is they had to show. Sometimes, all that is required is an oath stating the three factors I mentioned above. Sometimes there will be an evidentiary showing of such things as:

- amounts spent on advertising
- press mentions
- volume of sales relative to the market

...and other types of evidence, depending on what sort of goods/services are involved, relevant to the factual question "Is this mark considered by consumers to distinctively refer to the goods/services of this entity or not?" - i.e. Does it function as a trademark to distinguish the goods/services of this entity from its competitors?

Any other case study resources out there other than these by Wikipedia?

I'm sure there are lots of introductory books and study guides on trademarks. I've been at this since 1992, so nothing in particular leaps to mind.