Enforceability of Indian Trademarks in the United States

Indian companies with valid, enforceable trademarks under Indian trademark law may be surprised to learn that their marks are not generally enforceable in the United States until they are used in commerce in America.  Thankfully, for those Indian companies and trademark holders seeking to expand their business into the United States (and enforce their marks accordingly), the process is relatively straightforward with the assistance of competent trademark counsel.

As a preliminary matter, any owner of a foreign trademark, including those holding marks in India, should ensure that there are no current uses of their mark – or a mark confusingly similar to their mark – in use in commerce in the United States.  If so, tread carefully; using your Indian mark in commerce in the United States could constitute trademark infringement if another company (with a registered or unregistered mark) is using a confusingly similar name in America.

If, however, your search comes up clean and your counsel advises you to proceed, you should continue by filing an application with the United States Patent and Trademark Office (“USPTO”).  Although registration of a trademark is not necessary to obtain trademark protection (common law rights exist in the US), registration provides the registrant with a number of advantages, including nationwide protection (as opposed to narrow geographic use protection), incontestability, prima facie evidence of ownership, the ability to use the ® symbol, among many others.

To file for a federal trademark registration, an Indian trademark holder needs to disclose its first use “anywhere” (which would include the use in India), as well its first use in commerce in the United States.  The trademark holder also needs to provide a number of other items related to its mark, including a description of the goods or services in connection with which the mark is being used.

About 3-4 months after filing the initial application, a trademark examining attorney will be assigned to the file, and will review the application that has been submitted.  The examining attorney will, if necessary, issue “office actions” noting perceived legal or factual deficiencies in the application.  While these deficiencies can be overcome (and JLG’s offices have overcome numerous office actions on behalf of its clients in the past), any response must be supported by facts and law.  In many cases, these office actions could have been avoided altogether had an experienced trademark lawyer prepared the application to begin with.  Office actions address any number of deficiencies, from likelihood of confusion with an existing registered mark to a refusal due to the genericness or descriptive nature of the mark at issue.

Once all office actions, if any, are overcome, the application is published for opposition, during which time other trademark owners can oppose the application on legal or factual grounds.  After the opposition period has passed, and usually between 6-8 months following the application date, a trademark registration issues.  The date of registration, however, reverts back to the date of filing, so acting quickly is essential when it comes to filing your trademark application in the United States because American trademark law rewards those who file first with senior rights to a junior registrant.