Miami, FL asked in Intellectual Property, International Law and Trademark for Florida

Q: Is an international registered trademark in the USA enough to stop a trademark infringement outside the USA?

The trademark is filled in the USA as an international trademark. I want to know if that is enough to stop someone using words from my trademark on their website outside the USA.

My trademark is made up with 3 words and a symbol, I have a disclaimer for the 3 words. However I have noticed a site using the 3 words of my trademark with the addition of one name in front it as a company. As well as They are selling same products with 2 of the words from my trademark and one of their name for a domain.

Can my international registered trademark stop them even though they are outside the USA?

2 Lawyer Answers
David Luther Woodward
David Luther Woodward
Answered
  • International Law Lawyer
  • Pensacola, FL
  • Licensed in Florida

A: You need to visit with a lawyer who specializes in intellectual property. I don't know where you are in the state, but if you call The Florida Bar in Tallahassee they can point you in the correct direction.

Good Luck

d

Marcos Garciaacosta agrees with this answer

Marcos Garciaacosta
Marcos Garciaacosta
Answered
  • Immigration Law Lawyer
  • Mesa, AZ

A: You definitely need to consult an attorney.

There are no international registrations. You MUST register your trademark in each country or jurisdiction where you desire protection. In addition you must show use there.

In this case is very valid for somebody to use your exact trademark in another country if you do not have protection there.

How it impacts your business in the USA needs to be understood and there are tools you can use to mitigate that damage, but in general you need to pay to get the protection.

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