Q:My Trademark Is Being Infringed Outside of the United States: What Should I Do?
– Infringed On
A:Dear Infringed On,
Before you take any action, take a breath and ask yourself this question—how will this infringement actually affect your business? Taking on international infringement takes time, money, and energy. If the company does most of their business in a local area that is not shared with you, your case against them may be more trouble than it’s worth.
If you determine that taking on this infringement is worth it, the next step is to speak with a Family Business Lawyer® with experience in trademarks (especially some experience with international trademark law). The first step might just be to send a cease and desist letter to the company that is using your trademark without your permission. They may also connect you with trademark attorneys in the country where the company infringing on your trademark is located, and will be able to more effectively take action to protect you.
Beyond going after the infringers, you can protect your trademark domestically by registering it with Customs and Border Patrol. They’ll then be able to see if any counterfeit merchandise using your trademark appears. This, of course, is only really effective if your products aren’t digital.
To protect yourself in the future, you could also try registering your trademark internationally. Consider registering your trademark with the International Bureau of the World Property Intellectual Organization (WIPO) once you’ve gotten your domestic trademark. Of course, a Family Business Lawyer® can help you with all of this so reach out so they can support you.