• Jessica Eaves Mathews

Can I Lose My Trademark If Others in Other Countries Start Using the Same Mark?

Question: Can I lose my trademark if others in other countries start using the same one?

That can’t happen here in the US as long as (1) you maintain your trademark status, (2) you continually use the mark in commerce (which you will do as long as you are in business) and (3) you monitor the marketplace for infringement and always go after infringers quickly and aggressively. If you don’t have a trademark in other countries, however, you could lose the right to use it there if someone else files first for a trademark in that country (depending on the trademark rules in that country). Each country’s trademark database is separate from each other country’s, so if you want protection in a particular country, you have to bite the bullet and apply for a trademark there (there are a few exceptions – e.g. you can do an application that will cover the entire European Union).

Once you have used your registered trademark on a continual basis for five years, then you can apply for “incontestability status,” which will make it much easier to defend your trademark. You could still have someone challenge your right to your mark, but once you get the status of incontestability, but most likely no challenge will prevail (assuming you meet all three requirements I outlined in the previous paragraph).

One additional form of protection: I suggest purchasing all forms of your URLs, not just the .com versions. Get the .net, .biz, .co, etc… AND I would buy the hyphenated versions of the URLs also. Many people will also buy the most common misspelled versions of their company name as a URL. That way, other companies cannot set up competing sites with the same or similar name.

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