Patent Attorney and Founder
Question:
I’ve got a trademark question. I manufacture a product and have a registered trademark in my country, but not in the U.S. Now, someone else is selling my product in the U.S. using my brand name. They didn’t create the product; they’re just reselling it.
So… who has the trademark rights in the U.S.? Me, the original maker with the registered mark in another country, or the person now selling the product in the U.S.?
Answer:
That’s a great, and surprisingly common, question.
Let’s say you’re based in the UK. You make a product and hold the trademark there. Now someone in the U.S. starts importing your goods and selling them with your logo on them. They’re not changing the product or labeling; they’re just selling it as-is.
Here’s the catch:
- In the U.S., trademark rights come from being the first to use the mark in commerce, not from owning a registration in another country.
- So technically, the U.S. seller might be the first to use your mark in U.S. commerce, but that doesn’t mean they have any legal right to it.
Why?
Because they’re not the brand owner. They didn’t create the product, and they don’t control the quality or reputation of the brand. If they try to register the mark with the USPTO, they’d be committing fraud, because they’re pretending to be you.
If this happened to a client of mine, here’s how I’d approach it:
- First, file a U.S. trademark application on behalf of the real brand owner.
- Then, if needed, send a cease-and-desist or start litigation for trademark infringement or false association.
One more thing, if the U.S. seller puts their own brand on the product and isn’t pretending to be you, it’s a different story. That might just be a grey market issue, not trademark fraud.
But pretending to be your company? That crosses a legal line.