Summary. A U.S. trademark registration stops at the border, and this article explains what a brand owner has to do to hold the same mark in other countries and what U.S. law will and will not do about infringement abroad. It walks through the treaty architecture (the Paris Convention, TRIPS, and the Madrid Protocol) and how the Lanham Act implements it through Section 44 and Sections 60 to 74, including priority claims, the five-year dependency period, central attack, and transformation. It then tells the story of Abitron Austria GmbH v. Hetronic International, the 2023 Supreme Court decision confining the Lanham Act's infringement provisions to domestic use in commerce, and traces what remains of Steele v. Bulova and the older effects tests. The article explains the circuit split over the famous-marks doctrine, from Grupo Gigante in the Ninth Circuit to ITC v. Punchgini in the Second, and the Belmora and Meenaxi line on foreign owners suing in the United States. It closes with trademark squatting in first-to-file countries, especially China, an extended worked example, common mistakes, an FAQ, and takeaways for owners on both sides of the border.

The founder of an Oregon cookware company gets an email from her new sourcing agent in Ningbo. The factory she has used for three years to make her insulated camp kettles cannot ship the next container. Chinese customs has detained the goods at the port because the kettles bear the mark EMBERLINE, and EMBERLINE is a registered Chinese trademark. It is not her registration. It belongs to a trading company in Shenzhen that filed for it in Class 21 eighteen months ago, about two months after her booth at a Las Vegas outdoor-gear show. The trading company has also recorded the registration with Chinese customs, and its lawyer has sent a polite letter offering to "transfer the mark for a reasonable fee."

Her U.S. registration, which she paid for and maintained and which carries a nationwide presumption of ownership at home, is irrelevant in Ningbo. So is her three-year head start. And when she calls her U.S. litigator to ask whether she can sue the trading company in Portland, the answer since 2023 has been shaped by a Supreme Court decision about radio remote controls for construction cranes.

This article explains why. It covers the territorial premise of trademark law, the treaties that soften it, the Madrid Protocol system that most U.S. owners now use to file abroad, the Supreme Court's decision in Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023), the unresolved fight over whether a mark famous abroad has rights here, and the practical problem of squatters in first-to-file countries. The step-by-step filing mechanics are in the companion Filing an International Trademark Application Under the Madrid Protocol: A Practical Guide; the strategic choices are in the International Trademark Filing Strategy Checklist: A Practical Checklist; and the forms are in the Global Trademark Portfolio Toolkit: Filing Matrices, Bad-Faith Registration Responses, and Watch Programs.

The short answer

  • Trademark rights are national. A U.S. registration protects the mark in the United States and nowhere else. Every country decides for itself who owns a mark within its borders, and most of the world awards the mark to the first person to file, not the first to use.
  • Treaties make filing easier, not automatic. The Paris Convention gives a six-month priority window after a first filing and requires national treatment. The Madrid Protocol lets one application, filed through the home office, reach more than a hundred jurisdictions. Neither gives anyone a mark in a country where they have not filed and been granted protection.
  • Madrid has a five-year tether. An international registration depends on the U.S. basic application or registration for five years. If the U.S. filing dies or shrinks in that period, every foreign designation dies or shrinks with it, subject to a three-month right to "transform" designations into national applications that keep the original date.
  • The Lanham Act no longer reaches foreign infringement. After Abitron, the infringement provisions of 15 U.S.C. § 1114(1)(a) and 15 U.S.C. § 1125(a)(1) apply only where the infringing "use in commerce" is domestic. Foreign sales to foreign buyers are, for the most part, a matter for foreign courts.
  • A mark famous abroad may or may not have rights here. The Ninth Circuit recognizes a narrow famous-marks exception to territoriality; the Second Circuit refuses to read one into federal law. The Fourth Circuit lets a foreign owner sue over deliberate passing off of its foreign mark even without U.S. use; the Federal Circuit has been stricter.
  • Squatters exploit the gap. In first-to-file countries, a stranger, a former distributor, or a factory can register a foreign brand and then block exports, list counterfeits, or demand a ransom. The cure is filing early, filing in local script, and knowing the local bad-faith remedies before you need them.

Why a trademark stops at the border

The territoriality principle

A trademark exists because consumers in a particular market associate a symbol with a particular source. That association is local. The Supreme Court built the U.S. law of common-law territory on the same premise in Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916), where it held that a mark's protection extends only to markets where the owner's goodwill has reached. For domestic geographic disputes, see The Geographic Scope of Common-Law Trademark Rights: A Practical Guide.

Internationally, the same idea is stronger, because it rests not only on consumer psychology but on sovereignty. Each nation grants and enforces trademark rights under its own law, for its own territory. Article 6(3) of the Paris Convention puts it plainly: a mark duly registered in one country is independent of marks registered in other countries, including the country of origin. A U.S. registration can be cancelled without affecting a Japanese registration of the same mark, and vice versa.

The Federal Circuit applied the principle with some bluntness in Person's Co. v. Christman, 900 F.2d 1565 (Fed. Cir. 1990). A Japanese clothing company used PERSON'S on apparel in Japan. An American businessman, Larry Christman, saw the goods on a trip to Japan, bought samples, came home, and began selling copies under the same mark in the United States, then registered it. When the Japanese company later expanded into the U.S. market and sought to cancel his registration, the Trademark Trial and Appeal Board sided with the Japanese company. The Federal Circuit reversed. Foreign use, the court held, does not create priority in the United States, and Christman's knowledge of the foreign mark did not by itself make his adoption bad faith, because the Japanese company had no U.S. rights for him to trample. The case is a staple of trademark courses because it seems unfair, and because it is the rule.

What first-to-file means in practice

The United States is unusual: rights arise from use, registration confirms and enlarges them, and an unregistered senior user can defeat a later registrant. Most of the world works the other way. In China, Japan, Korea, most of continental Europe, and much of Latin America and the Middle East, the first valid application generally wins, and unregistered use earns little or no protection unless the mark is well known or the filer acted in demonstrable bad faith. The United Kingdom, Canada, Australia, India, and other common-law jurisdictions sit in between, with registration systems overlaid on passing-off or similar unregistered rights.

The practical consequence is that an American company's three years of sales into a foreign market may count for nothing against a local registrant, and its U.S. registration counts for nothing at all.

The treaty architecture

Trademark treaties do not create international trademarks. They make national filings cheaper, faster, and more predictable, and they set minimum standards that member states must meet.

The Paris Convention

The Paris Convention for the Protection of Industrial Property, first signed in 1883 and administered by the World Intellectual Property Organization (WIPO), does four things that matter here.

  • National treatment. Each member must give nationals of other members the same protection it gives its own nationals.
  • Priority. Under Article 4, a person who files a trademark application in one member country has six months to file in other members and claim the first filing date. A filing made within the window is treated as if it had been made on the priority date, so an intervening application by someone else does not defeat it.
  • Well-known marks. Article 6bis requires members to refuse or cancel registrations, and to prohibit use, of marks that reproduce or imitate a mark the competent authority considers well known in that country as the mark of a person entitled to the Convention's benefits, for identical or similar goods. A cancellation request must be allowed for at least five years after registration, and no time limit may apply to marks registered or used in bad faith.
  • Agents and representatives. Article 6septies lets a mark owner oppose, cancel, or demand assignment of a registration that its agent or representative obtained in its own name without authorization. This is the treaty tool against the distributor who registers the principal's mark.

Article 6quinquies adds the "telle quelle" rule: a mark duly registered in its country of origin must generally be accepted for filing and protected "as is" in other members, subject to listed exceptions such as lack of distinctiveness and conflict with prior rights.

The Lanham Act implements Paris mainly through 15 U.S.C. § 1126, Section 44. Section 44(d) gives the six-month priority claim; Section 44(e) lets a foreign applicant register in the United States based on a home-country registration, without first using the mark here, as long as it declares a bona fide intention to use it. Use eventually matters: the registration must be maintained with declarations of use under 15 U.S.C. § 1058, and a mark never used is vulnerable to expungement under 15 U.S.C. § 1066a. For how the Trademark Modernization Act tools work, see Expungement, Reexamination, and Letters of Protest: The Trademark Modernization Act in Practice.

Courts have read Paris as largely not self-executing. The Second Circuit said so in Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633 (2d Cir. 1956), holding that the Convention gives foreign nationals national treatment, not a supranational cause of action, and the same reasoning drives the modern famous-marks cases discussed below.

TRIPS

The World Trade Organization's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), effective 1995, folds the Paris trademark provisions into the WTO system and adds enforceable minimums in Articles 15 through 21. Article 15 defines protectable subject matter and bars making actual use a condition of filing. Article 16 extends Article 6bis to services, tells members to assess well-known status by knowledge in the relevant sector of the public (including knowledge obtained through promotion), and protects registered well-known marks against use on dissimilar goods where use would indicate a connection and damage the owner. Article 18 requires terms of at least seven years, renewable indefinitely. Article 19 allows cancellation for non-use only after an uninterrupted period of at least three years. Article 21 bars compulsory licensing of marks and permits assignment with or without the business.

TRIPS disputes are between governments. A private brand owner cannot sue under TRIPS, but it can cite TRIPS standards to foreign agencies and courts, and its government can raise systemic problems (China's treatment of bad-faith filings has been a recurring subject of U.S. Trade Representative reporting).

The Madrid system

The Madrid system, also administered by WIPO, is a filing and administration treaty. The original Madrid Agreement of 1891 never attracted the United States, largely because it required a home registration before an international filing and its dependency rules were harsh. The Madrid Protocol of 1989 relaxed both, and the United States joined effective November 2, 2003, after Congress passed the Madrid Protocol Implementation Act. The European Union joined in 2004; China had joined in 1995; Canada and Brazil joined in 2019. WIPO reports more than 110 members covering roughly 130 countries; the list grows every year, so check WIPO's current member list before relying on any count. Notable gaps have included Argentina, Taiwan, Hong Kong (China's membership does not extend to it), South Africa, and Venezuela, among others.

The mechanics, in outline:

  1. Basic mark. The applicant must have a pending application or a registration (the "basic mark") in its office of origin, the national or regional office of a member with which it has the required connection (nationality, domicile, or a real and effective business establishment).
  2. International application. The applicant files an international application through that office, designating the members where it wants protection. For U.S. applicants this is 15 U.S.C. § 1141a, with the USPTO's rules in 37 C.F.R. part 7.
  3. Certification and registration. The office of origin certifies that the international application matches the basic mark (15 U.S.C. § 1141b) and forwards it to WIPO's International Bureau, which examines formalities, classification, and fees, then records an international registration and notifies each designated office.
  4. Examination by each designated office. Each designated office examines under its own law and may issue a provisional refusal within 12 months, or 18 months for members that have made the necessary declaration (the United States has, and refusals based on oppositions can come later still if the office gave notice in time). If no refusal issues, the mark is protected there as if registered nationally.
  5. Central management. Changes of name or address, assignments, limitations, renewals, and subsequent designations of additional countries are recorded once, centrally, at WIPO. Renewal is every ten years.

The system runs in reverse for foreign owners coming to the United States. A foreign holder of an international registration may request extension of protection to the United States (15 U.S.C. § 1141e). The request must include a verified declaration of bona fide intent to use the mark in U.S. commerce (15 U.S.C. § 1141f), which practitioners call a "Section 66(a)" filing. The USPTO examines it like any application, may refuse it within the treaty deadlines under 15 U.S.C. § 1141h, and, if it is allowed, issues a certificate of extension that has the same effect as a registration on the Principal Register (15 U.S.C. § 1141i). The owner must then file affidavits of use under 15 U.S.C. § 1141k, the Madrid counterpart of Section 8. Since August 2019, foreign-domiciled applicants and registrants must be represented before the USPTO by a U.S.-licensed attorney under 37 C.F.R. part 2 (section 2.11), a rule adopted in response to a flood of fraudulent filings, much of it traced to China. The Federal Circuit rejected a procedural challenge to the domicile-address requirement that came with it in In re Chestek PLLC, 92 F.4th 1105 (Fed. Cir. 2024).

Comparing the routes into a foreign country

Route What you file Strengths Weaknesses
National filing in each country Separate application, local agent, local language Independent of the U.S. filing; tailored specification; local agent engaged from day one Separate fees, translations, and agents for every country; separate renewals
Regional filing (EUTM, Benelux, OAPI, ARIPO) One application for a bloc One examination for many countries All or nothing: a conflict in one EU member state can sink the EUTM, though conversion is possible
Madrid international application One application through the USPTO, one fee in Swiss francs, one language Cheap to file and renew; central changes and assignments; easy to add countries later Five-year dependency on the U.S. basic mark; U.S.-narrow goods descriptions carried abroad; local counsel still needed for refusals
Paris priority claim (with any of the above) Foreign filings within six months of the U.S. filing Locks the U.S. date worldwide Six months is short, and missing it is permanent

The choice is rarely one route for everything. For the decision factors, see the International Trademark Filing Strategy Checklist: A Practical Checklist, and for the patent-side analog of the priority and national-phase logic, see International Patent Filing: The PCT, Paris Priority, National Phase, and Foreign Prosecution.

Dependency, central attack, and transformation

The feature that makes Madrid cheap also makes it fragile. For five years from the date of the international registration, protection in every designated country depends on the basic mark. If the U.S. basic application is refused, abandoned, or narrowed, or the basic registration is cancelled, in whole or in part, during that period (or later, as a result of a proceeding started within it), the USPTO must notify WIPO under 15 U.S.C. § 1141c, and WIPO cancels the international registration to the same extent. A competitor who wants to knock out a company's protection in thirty countries can try to do it in one proceeding at home. That is "central attack."

The Protocol softens the blow. Within three months after cancellation, the holder may "transform" each lost designation into a national or regional application in that country, which keeps the international registration date and any priority. For extensions of protection to the United States, 15 U.S.C. § 1141j provides the parallel rule: if the international registration is cancelled at the request of the office of origin, the holder may file a U.S. application within three months that is treated as filed on the international registration date. Transformation is a rescue, not a free pass. Each transformed application costs national fees and local counsel, and a missed three-month window is fatal.

Central attack bites U.S. owners harder than most, for two reasons. First, the USPTO requires narrower, more specific identifications of goods and services than many offices, and the international application cannot be broader than the basic mark, so a U.S.-based international registration often carries a thinner specification abroad than a local filing would. See USPTO Trademark Classes: A Guide to the Nice Classification. Second, a U.S. intent-to-use application is exposed to refusals, oppositions, and failures to file a statement of use, any one of which can unwind the foreign protection that rests on it. An application built on a mark that later draws a failure-to-function or ornamental refusal is a weak foundation for an international registration; see Failure to Function and Ornamental Refusals: Why Slogans, Hashtags, and Merchandise Designs Get Rejected. Many practitioners therefore prefer to base an international application on a registered U.S. mark, or on an application that has already cleared examination, when timing allows.

Before Abitron: Steele and the effects tests

For seventy years the leading case on the Lanham Act abroad was Steele v. Bulova Watch Co., 344 U.S. 280 (1952). Sidney Steele, a U.S. citizen living in San Antonio, ran a watch business in Mexico City. He learned that Bulova had not registered its mark in Mexico, registered BULOVA there himself, and began assembling watches from Swiss movements and U.S.-bought parts, stamping them "Bulova," and selling them in Mexico. Many crossed the border. Bulova's dealers in Texas fielded complaints about watches it never made. The Supreme Court held that the Lanham Act reached Steele's conduct. He was a U.S. citizen, he bought components and planned the scheme here, his watches entered and reflected on Bulova's reputation in the U.S. market, and (by the time of decision) Mexico had nullified his registration, so a U.S. decree would not interfere with Mexican sovereignty.

Lower courts turned Steele into balancing tests. The Second Circuit's Vanity Fair Mills test, mentioned above, asked whether the defendant was a U.S. citizen, whether the conduct had a substantial effect on U.S. commerce, and whether there was a conflict with trademark rights under foreign law. The First Circuit, in McBee v. Delica Co., 417 F.3d 107 (1st Cir. 2005), held that for a foreign defendant the plaintiff had to show a substantial effect on U.S. commerce, and dismissed the claim of the jazz bassist Cecil McBee against a Japanese company that sold "Cecil McBee" clothing in Japan. The Ninth Circuit used a version of its antitrust-derived Timberlane factors and, in Trader Joe's Co. v. Hallatt, 835 F.3d 960 (9th Cir. 2016), let Trader Joe's proceed against a Canadian who bought its groceries in Washington State and resold them at a Vancouver store called "Pirate Joe's." The court also held that extraterritorial reach goes to the merits of a Lanham Act claim, not to subject-matter jurisdiction.

Meanwhile, the Supreme Court was rebuilding its general approach to statutes abroad. In Morrison v. National Australia Bank Ltd., 561 U.S. 247 (2010), RJR Nabisco, Inc. v. European Community, 579 U.S. 325 (2016), and WesternGeco LLC v. ION Geophysical Corp., 585 U.S. 407 (2018), it settled on a two-step framework. Step one: has Congress clearly and affirmatively indicated that the provision applies abroad? If not, step two: identify the provision's "focus," and ask whether the conduct relevant to that focus occurred in the United States. If it did, the case is a permissible domestic application, even if other conduct occurred abroad. If it did not, the case is an impermissible extraterritorial one. The Lanham Act's effects tests did not fit that framework, and Abitron is where the Court said so.

Abitron v. Hetronic: the story

Hetronic International, an Oklahoma company, makes radio remote controls for heavy construction equipment such as cranes. A German affiliate, Hetronic Germany, and related European companies distributed Hetronic products in Europe under license. After years of the relationship, the European distributors concluded, based on an obscure research-and-development agreement, that they owned much of Hetronic's intellectual property. They began making their own products, branded with Hetronic's marks, and selling them, mostly in Europe and mostly to European buyers. A smaller share went directly into the United States, and some went to foreign buyers who designated the United States as the destination.

Hetronic sued in the Western District of Oklahoma under 15 U.S.C. § 1114(1)(a) and § 1125(a)(1), seeking damages for infringement worldwide. The district court rejected Abitron's extraterritoriality defense, and a jury awarded approximately $96 million, an amount that, as the Supreme Court later described it, included direct sales into the United States, foreign sales of products destined for the United States, and foreign sales of products that never came here. The court also entered a permanent injunction against use of the marks anywhere in the world. The Tenth Circuit narrowed the injunction but otherwise affirmed, holding that the Lanham Act reached all of the foreign infringing conduct because of its substantial effects on U.S. commerce.

The holding

The Supreme Court vacated and remanded. Writing for five Justices, Justice Alito applied the RJR Nabisco framework. At step one, nothing in either provision clearly reaches foreign conduct; the Lanham Act's definition of "commerce" as all commerce Congress may lawfully regulate is the kind of boilerplate that does not rebut the presumption. At step two, the Court declined to pick between the parties' competing descriptions of the statute's "focus" (the defendant's use of the mark versus consumer confusion and harm to the owner) because, it reasoned, the conduct relevant to any proposed focus is the same: infringing "use in commerce," as defined in 15 U.S.C. § 1127. Confusion is a characteristic of an offending use, not separate conduct. So the provisions "extend only to claims where the claimed infringing use in commerce is domestic."

The Court read Steele as consistent with that rule, because Steele's case involved domestic conduct as well as domestic confusion. And it rejected the Tenth Circuit's effects-based approach as the kind of open-ended balancing that the presumption against extraterritoriality exists to prevent, noting the risk of conflict with foreign trademark systems, each of which might apply its own law to the same conduct.

The concurrences

Justice Jackson joined the majority and wrote separately to explain what "use in commerce" means. A mark is used in commerce, on her view, wherever it serves its source-identifying function in the marketplace. A product sold abroad that later ends up in the United States, where its mark identifies source to U.S. consumers, can still involve a domestic use. Her example was a German company that sells handbags marked "Coache" in Germany. American students who buy the bags on spring break and carry them home do not create a domestic use. But if the students resell the bags in the United States, confusing consumers, the mark the German company affixed is now identifying source in U.S. commerce, and the German company may face liability.

Justice Sotomayor, joined by the Chief Justice and Justices Kagan and Barrett, concurred only in the judgment. She would have held that the focus of the provisions is likely consumer confusion in the United States, so a claim reaches foreign sales where they are likely to cause confusion among U.S. consumers. Because four Justices took that view and only five joined the majority's reasoning, the line between domestic and foreign "use" is narrower than the holding sounds, and Justice Jackson's account is likely to matter in close cases.

What changed, and what did not

  • Pure foreign sales are out. Sales by a foreign defendant, made abroad, to foreign buyers, of goods that stay abroad, do not support a Lanham Act infringement claim. Damages under 15 U.S.C. § 1117 for those sales are not available. That is the bulk of what the Hetronic jury awarded.
  • Sales into the United States are in. Direct sales to U.S. customers, imports, U.S. advertising and offering for sale, and online sales that are actually delivered here remain domestic uses. Abitron did not contest coverage of its direct U.S. sales.
  • The middle is contested. Foreign sales of goods the buyer designates for the United States, goods that later reach U.S. consumers through resale, and online storefronts that target but do not ship to U.S. customers all require the careful use-in-commerce analysis the majority left open and Justice Jackson sketched. Expect litigation on these facts, and plead the domestic touchpoints in detail.
  • Worldwide injunctions are suspect. An injunction under 15 U.S.C. § 1116 must rest on a domestic violation. A court can still enjoin a party over which it has personal jurisdiction from domestic infringing uses, and it may have contract or other bases for broader relief, but a Lanham Act injunction against use "anywhere in the world" is hard to square with Abitron.
  • Other provisions are open. Abitron addressed § 1114(1)(a) and § 1125(a)(1). Its reasoning will likely govern dilution under § 1125(c), cybersquatting under § 1125(d), and counterfeiting remedies, but courts must work through each provision's text. The criminal counterfeiting statute, 18 U.S.C. § 2320, and the import-blocking provisions of 15 U.S.C. § 1124 and 19 U.S.C. § 1526 are inherently border-focused and remain powerful.
  • Contract claims are untouched. A license or distribution agreement governed by U.S. law can still impose worldwide obligations. A brand owner whose foreign problem is a former licensee or distributor (as Hetronic's was) should look first to the contract, to its forum and governing-law clauses, and to the ownership questions covered in Who Owns the Brand: Trademark Ownership Disputes Between Co-Founders, Bands, Licensees, and Distributors.

For how the damages measure interacts with these limits, see Damages Apportionment in Trademark Cases: A Practical Guide. For the jurisdictional half of suing a foreign company, see Personal Jurisdiction Over Online and Foreign Defendants: From Zippo to Ford Motor.

The practical lesson of Abitron is the same lesson territoriality has always taught, now with the Supreme Court's signature on it: if the problem is abroad, the solution is mostly abroad. A U.S. court will police U.S. commerce. The owner needs registrations, and enforcement counsel, in the countries where the infringement happens.

Marks famous abroad but unused here

Territoriality produces a hard case. A foreign company's mark is famous in its home country and known to many U.S. residents, especially immigrants and travelers, but the company has never used it in the United States. Someone else adopts it here first, often to trade on that foreign reputation. Who wins?

Grupo Gigante: a narrow exception

Grupo Gigante SA de CV v. Dallo & Co., 391 F.3d 1088 (9th Cir. 2004) involved GIGANTE, the name of a large Mexican grocery chain that had used it since 1962 and operated stores across Mexico, including two in Tijuana, just south of San Diego. Michael Dallo opened a Gigante Market in San Diego in 1991, and his family opened a second in 1996, years before Grupo Gigante opened its first U.S. store in the Los Angeles area in 1999. Judge Kleinfeld, writing for the panel, held that there is a famous-mark exception to the territoriality principle: "There can be no justification for using trademark law to fool immigrants into thinking that they are buying from the store they liked back home." But the court set a high bar. Secondary meaning is not enough; the court must be satisfied, by a preponderance of the evidence, that a substantial percentage of consumers in the relevant American market is familiar with the foreign mark. The panel vacated and remanded for that test to be applied, and agreed that laches barred an injunction against the Dallos' two existing stores.

Punchgini: no exception in federal law

The Second Circuit took the opposite view in ITC Ltd. v. Punchgini, Inc., 482 F.3d 135 (2d Cir. 2007). ITC, an Indian conglomerate, operated the famous BUKHARA restaurant in New Delhi and had once operated a Bukhara in New York, but it had closed that restaurant years earlier and stopped using the mark in the United States. Former employees opened "Bukhara Grill" in Manhattan, with similar decor, menus, and uniforms. The Second Circuit held that ITC had abandoned its U.S. mark and that the famous-marks doctrine, however sensible as policy, is not part of federal law: Congress has not written it into the Lanham Act, Article 6bis is not self-executing, and Section 44 gives foreign nationals the protections of the Act, not freestanding treaty rights. The court certified a question to the New York Court of Appeals about state law, which answered in ITC Ltd. v. Punchgini, Inc., 9 N.Y.3d 467 (2007) that New York unfair competition law can protect a foreign owner's goodwill if the defendant deliberately copied a mark that had acquired goodwill in New York, but declined to adopt a famous-marks doctrine as such. On remand, the Second Circuit affirmed judgment for the defendants because ITC had not shown that New York consumers associated BUKHARA with ITC's restaurants, in ITC Ltd. v. Punchgini, Inc., 518 F.3d 159 (2d Cir. 2008). The Second Circuit had earlier rejected a related argument by Cuba's state tobacco company over COHIBA in Empresa Cubana del Tabaco v. Culbro Corp., 399 F.3d 462 (2d Cir. 2005), there on embargo grounds.

Belmora and Meenaxi: suing without U.S. use

A different route avoids ownership altogether. Instead of claiming to own the mark in the United States, the foreign company claims that the U.S. user is deceiving consumers about source, which is actionable under § 1125(a), or is using a registration "to misrepresent the source" of goods, which is a ground for cancellation under 15 U.S.C. § 1064(3).

Bayer has sold FLANAX, a naproxen pain reliever, in Mexico for decades. Belmora LLC began selling FLANAX naproxen in the United States, registered the mark, and marketed it with packaging and statements that evoked the Mexican product to Hispanic consumers. The TTAB cancelled Belmora's registration for misrepresentation of source in Bayer Consumer Care AG v. Belmora LLC, 90 U.S.P.Q.2d 1587 (T.T.A.B. 2009). The district court reversed on the ground that Bayer could not sue over a mark it did not use here. In Belmora LLC v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), the Fourth Circuit vacated. Applying the zone-of-interests and proximate-cause test of Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), it held that Section 43(a) does not require the plaintiff to use its mark in U.S. commerce. Bayer alleged lost sales to Mexican-American consumers who would otherwise have bought its FLANAX in Mexico, and reputational harm from deliberate passing off. That was enough. The Supreme Court denied review.

The Federal Circuit has been less receptive. In Meenaxi Enterprise, Inc. v. Coca-Cola Co., 38 F.4th 1067 (Fed. Cir. 2022), Coca-Cola, which owns THUMS UP and LIMCA soft drinks in India, petitioned to cancel a New Jersey importer's U.S. registrations of the same marks under Section 14(3). The TTAB cancelled them. The Federal Circuit reversed, holding that Coca-Cola had not shown a cognizable injury: no evidence of lost U.S. sales, and no evidence that the importer's use damaged the reputation of the Indian marks among U.S. consumers. Meenaxi does not reject Belmora outright, but it demands concrete evidence that the foreign owner's commercial interests in the United States are actually being harmed.

Where this leaves the foreign brand owner

Claim Best authority What must be proved Weak point
Ownership via famous-marks exception Grupo Gigante (9th Cir.) Secondary meaning plus familiarity among a substantial percentage of the relevant U.S. market Rejected in the 2d Cir.; demanding proof even in the 9th
State unfair competition Punchgini (N.Y.) Deliberate copying and goodwill among local consumers State-specific; no ownership right
Section 43(a) false association or passing off Belmora (4th Cir.) Commercial injury within Lexmark: lost sales or reputational harm Meenaxi's demand for concrete U.S. injury
Cancellation under Section 14(3) Belmora; TTAB Use of the registration to misrepresent source, plus entitlement to sue Same injury showing
Agent or representative filing Paris art. 6septies; ownership doctrine Prior relationship and unauthorized filing Treaty not self-executing; rely on ownership and fraud doctrines
Priority via treaty filing 15 U.S.C. § 1126; § 1141g A timely U.S. filing with a priority claim Only as good as the filing date

The simplest protection, by far, is the last row. A foreign owner that files in the United States, directly or through Madrid, gets a constructive-use priority date under 15 U.S.C. § 1057(c) once the mark registers. The Ninth Circuit confirmed in Lodestar Anstalt v. Bacardi & Co., 31 F.4th 1228 (9th Cir. 2022) that a Madrid registrant without prior U.S. use has priority, as of its constructive-use date, over a later U.S. adopter, and can enforce it once it begins bona fide use. Lodestar still lost, because it could not show a likelihood of confusion between its UNTAMED spirits and Bacardi's "Untameable" campaign. Priority opens the courthouse door; it does not win the case. For how constructive use operates, see Federal Registration and Constructive Use Under 15 U.S.C. § 1057(c): A Practical Guide.

Trademark squatting in first-to-file countries

How squatting works

A squatter files for someone else's brand in a country where the brand owner has not yet filed, then monetizes the registration. The usual squatters are not anonymous criminals. They are the owner's own distributor, its contract manufacturer, a trade-show visitor, a former employee, or a professional filer who watches foreign registers, crowdfunding sites, and trade press for brands about to expand. The monetization takes several forms:

  • Ransom. An offer to assign the registration for a fee, often framed as reimbursement of "costs."
  • Export blocking. In China, a registration can be recorded with customs, and Chinese customs can detain outbound goods bearing the mark. A brand owner that manufactures in China can find its own production stopped at the port.
  • Marketplace takedowns. Local registrations are often enough to file infringement complaints against the true owner's listings on regional e-commerce platforms.
  • Parallel business. The squatter sells its own goods under the brand, sometimes counterfeits and sometimes legitimate goods diverted from the owner's supply chain.

China

China is the country where most U.S. owners first meet the problem, because it is both the factory and a vast market, and because it applies a strong first-to-file rule. Several features matter.

  • Subclasses. The China National Intellectual Property Administration (CNIPA) examines against its own Classification of Similar Goods and Services, which divides each Nice class into subclasses. A filing that covers some subclasses may leave adjacent goods open to a squatter. Specifications built for the USPTO often do not track the Chinese subclasses at all.
  • Chinese-language marks. Chinese consumers, retailers, and media will give a foreign brand a Chinese name whether the owner chooses one or not. If the owner does not register a Chinese-character version, someone else may. The best-known illustration is the long dispute between Michael Jordan and Qiaodan Sports, a Chinese sportswear company that registered "乔丹" (Qiaodan, the common Chinese rendering of "Jordan") and related marks. As widely reported, China's Supreme People's Court ruled in 2016 that certain Chinese-character registrations infringed Jordan's prior name rights and should be revisited, while rejecting his challenge to the romanized "QIAODAN" marks. Years of litigation, and partial success, followed a problem that a filing in the 1990s would have avoided.
  • Bad-faith tools. China's Trademark Law, as amended effective November 1, 2019, directs examiners to reject bad-faith applications "not intended for use" (Article 4) and lets oppositions and invalidations rely on that ground. Other provisions address agents and representatives who file without authorization (Article 15), well-known marks (Article 13), pre-emptive registration "by unfair means" of a mark already in use with a certain influence (Article 32), and registrations obtained by deception or other improper means (Article 44). Opposition is available within three months of preliminary publication; invalidation on relative grounds generally must be brought within five years of registration, with no time limit for a well-known mark registered in bad faith. Non-use cancellation is available after three consecutive years without use. China has been considering a further comprehensive revision of its Trademark Law; check the current text before relying on article numbers.
  • The Apple and Proview episode. The iPad dispute, in which Apple paid $60 million in a 2012 settlement mediated by the Guangdong High People's Court to a Shenzhen company that held Chinese IPAD registrations, is often cited as proof that even sophisticated owners lose time and money to registrations they did not control. The details were contested; the lesson was not.

Elsewhere

Squatting is not a Chinese phenomenon alone. Owners report similar problems in Southeast Asia, the Middle East, and Latin America, and in any country where a distributor is the only local presence. Paris Article 6septies, and national provisions modeled on it, give a principal a remedy against a disloyal agent or representative. Bad faith is an absolute ground for invalidity of an EU trade mark under the EU Trade Mark Regulation, and the Court of Justice's decision in Chocoladefabriken Lindt & Sprüngli (2009) frames the inquiry around the applicant's knowledge and intention at the filing date. The United Kingdom's Supreme Court addressed bad faith in overly broad specifications in SkyKick v. Sky (2024), holding that applying for goods and services with no intention to use the mark on them can be bad faith in part. Neither ruling is a substitute for filing.

What the United States does about squatting here

The United States has its own version of the problem, aimed the other way: foreign filers, often using fraudulent specimens or false domicile information, have filed large numbers of applications for marks they do not use. The USPTO responded with the 2019 U.S.-counsel rule, domicile and identity verification, sanctions orders terminating fraudulent filings, and, under the Trademark Modernization Act, expungement and reexamination proceedings under 15 U.S.C. § 1066a and § 1066b. Section 44(e) and Section 66(a) registrations, which issue without any showing of use, are frequent targets of expungement because the registrant may never have used the mark in the United States at all. A U.S. owner blocked by such a registration can also oppose under 15 U.S.C. § 1063, petition to cancel under § 1064 for abandonment or fraud (subject to the demanding intent standard of In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009)), or file a letter of protest against a pending application. See Petitioning to Cancel a Trademark Registration: A Practical Checklist.

The EU and the UK after Brexit

The European Union trade mark (EUTM), granted by the EU Intellectual Property Office (EUIPO), is a single unitary right across all member states. It can be obtained directly or by designating the EU in a Madrid application. Examination covers absolute grounds only; relative grounds (conflicts with earlier rights) are raised by oppositions, which must be filed within three months after publication. The unitary character cuts both ways: an earlier right in a single member state can block the whole EUTM, although a refused EUTM can be converted into national applications that keep its date. Use need not precede filing, but a registration not put to genuine use within five years becomes vulnerable to revocation and cannot support an opposition against a later mark if use is challenged.

The United Kingdom left the EU's trademark system on January 1, 2021. Every EUTM registered on that date was cloned into a "comparable" UK registration with the same dates, at no cost to the owner. Pending EUTM applications were not cloned; owners had nine months, until September 30, 2021, to refile in the UK and keep the EUTM's dates. International registrations designating the EU received parallel treatment. Since then, the UK must be covered separately, either nationally or by designating the UK in a Madrid application, and the UK Intellectual Property Office generally requires a UK address for service in contested proceedings. An owner whose last portfolio review predates Brexit should confirm that its comparable UK marks are being renewed and that newer EUTMs have UK counterparts.

Practical implications

For a U.S. company expanding abroad

  1. File before you talk. Trade shows, crowdfunding campaigns, distributor negotiations, and factory onboarding are the moments squatters watch. File in the key manufacturing and sales countries before them, or at least within the six-month Paris window after the U.S. filing.
  2. File where you make, not only where you sell. A registration in the country of manufacture protects against export blocking and gives standing to act against factory overruns.
  3. Register the local-script mark. Choose a Chinese name (and, where relevant, Japanese katakana, Korean hangul, Arabic, Cyrillic, or Thai renderings) deliberately, clear it, and file it.
  4. Use Madrid for breadth, national filings for depth. Madrid is efficient for many countries with ordinary specifications. In China, a direct national filing tailored to subclasses is often worth the extra cost. In any country where the U.S. specification is too narrow to protect the business, a national filing with a local specification may be better.
  5. Write ownership into distribution and manufacturing contracts. Require distributors and manufacturers to acknowledge ownership, refrain from filing, and assign any registrations they obtain, with governing law and a forum that can actually compel compliance. See Drafting and Administering a Trademark License: A Practical Guide.
  6. Record with customs. Record U.S. registrations with U.S. Customs and Border Protection under 19 C.F.R. part 133, and record foreign registrations with foreign customs where available (China's customs recordation system and the EU's application-for-action procedure are the most used). See the Customs IP Enforcement Checklist: A Practical Checklist.
  7. Watch foreign registers. A watch on the countries that matter costs far less than an invalidation action. Oppositions are cheaper and faster than cancellations everywhere.

For a foreign company entering the United States

  • File in the United States before launching here, through Section 44 or Madrid, and claim Paris priority where possible.
  • Retain U.S.-licensed counsel, as 37 C.F.R. part 2 requires for foreign-domiciled applicants.
  • Do not assume foreign fame protects you. Outside the Ninth Circuit, a famous foreign mark without U.S. use or a U.S. filing is exposed, and even in the Ninth Circuit the proof is expensive.
  • Begin bona fide U.S. use in time to support the post-registration affidavits under 15 U.S.C. § 1141k or § 1058, and to defend against expungement and abandonment.

For foreign defendants after Abitron

A foreign company accused of infringement in a U.S. court should map every sale by location of sale, location of delivery, and destination designated by the buyer, and move early to limit claims and discovery to domestic uses. It should also consider whether the court has personal jurisdiction at all (service abroad is often a separate fight; see Serving a China-Based Defendant Under the Hague Service Convention: A Practical Guide) and whether a contract claim, not a Lanham Act claim, is the plaintiff's real theory.

Extended worked example: Cindervale Outdoor

Return to the Oregon founder. Her company, Cindervale Outdoor, Inc., sells EMBERLINE insulated cookware. Here is how her problem unfolds, and how it could have gone.

What happened. Cindervale filed a U.S. intent-to-use application for EMBERLINE in Class 21 in March of Year 1, launched in June, and registered in Year 2. It began manufacturing in Ningbo in Year 1 and showed at a Las Vegas trade show in January of Year 3. A Shenzhen trading company filed in China for EMBERLINE in Class 21 in March of Year 3, and for "安博莱" (a plausible Chinese rendering) at the same time. It registered both and recorded them with Chinese customs. In Year 4, customs detained Cindervale's outbound container.

Options in China. Cindervale cannot rely on its U.S. registration in China, and it cannot rely on prior use, because it never sold in China. Its strongest arguments are bad faith and prior relationship. A Chinese investigator finds that the trading company has filed more than two hundred marks belonging to foreign consumer brands, many traceable to trade-show exhibitor lists, and has no evident business under any of them. That pattern supports an invalidation under the bad-faith and improper-means provisions. Cindervale's Chinese counsel files invalidation actions against both registrations, files Cindervale's own applications for the Latin-script mark and a Chinese name of its choosing across the relevant subclasses, and negotiates with customs to release the goods on the basis of the pending challenge, which may or may not succeed quickly. Cindervale also considers a negotiated purchase, which is faster but rewards the squatter and invites the next one.

Options in the United States. Cindervale's U.S. lawyer considers suing the trading company in Oregon. After Abitron, there is no Lanham Act claim for the squatter's activity in China. If the squatter begins selling EMBERLINE goods to U.S. buyers through a marketplace, those sales are domestic uses, and Cindervale can sue, seek a seizure or Schedule A-style relief, and record its U.S. registration with CBP to stop imports. See Counterfeiting, Seizure Orders, and Schedule A Litigation: Fighting Fakes in Federal Court.

What it should have done. In March of Year 1, alongside the U.S. application, Cindervale could have filed in China directly, covering the relevant subclasses and a chosen Chinese name, and filed a Madrid application within six months designating the EU, the UK, Japan, Korea, Canada, Australia, and Mexico, all claiming the U.S. priority date. Total filing cost would likely have been in the low-to-mid five figures, a fraction of the cost of the invalidation actions and the lost container. The International Trademark Filing Strategy Checklist: A Practical Checklist turns that plan into tasks.

One more trap. If Cindervale's Madrid application had been based on its pending intent-to-use application, and that application had then been refused on a descriptiveness ground in Year 2, every designation would have fallen with it. Cindervale would have had three months to transform each designation into a national filing. Basing the international application on a registration, or on an application that had cleared examination, would have avoided the exposure.

Common mistakes

  • Assuming the U.S. registration travels. It does not. Neither does U.S. use.
  • Missing the six-month Paris window. Priority is lost permanently, and every filing made after the window competes with whatever intervened.
  • Basing a Madrid filing on a weak U.S. application. Central attack is real during the five-year dependency period.
  • Carrying a narrow U.S. specification abroad. Madrid designations cannot be broader than the basic mark. In some countries, that leaves important goods unprotected.
  • Ignoring local script and subclasses. In China especially, the Latin-script mark in the wrong subclasses is not enough.
  • Letting distributors file. Contracts that do not address local registrations invite a dispute the owner may lose.
  • Expecting a U.S. court to fix a foreign problem. After Abitron, U.S. infringement claims require domestic use. Plan foreign enforcement in foreign forums, and use 28 U.S.C. § 1782 to gather U.S. evidence for those proceedings. See Section 1782 Discovery in Aid of Foreign Proceedings: Who Can Ask, What They Get, and What ZF Automotive Changed.
  • Forgetting the U.S. maintenance filings for a Madrid extension. The WIPO renewal does not satisfy the USPTO's Section 71 affidavit requirement. Both calendars must be kept. See the Trademark Maintenance and Renewal Checklist: A Practical Checklist.

FAQ

Is there such a thing as an international trademark? No. An international registration under Madrid is a bundle of national and regional rights, administered centrally. Each country's protection is governed by its own law.

How long do I have after filing in the United States to file abroad with priority? Six months from the U.S. filing date, under Article 4 of the Paris Convention and 15 U.S.C. § 1126(d). A Madrid application filed within that window can claim the priority for all designations.

Can I sue in the United States over infringement in another country? Not under the Lanham Act's infringement provisions, unless the infringing use in commerce is domestic. You may have contract claims, or claims under foreign law that a U.S. court could in theory hear, but foreign courts are usually the realistic forum. U.S. courts determine foreign law as a question of law under Fed. R. Civ. P. 44.1, which adds cost and uncertainty.

My mark is famous in Mexico. Does that give me rights in Texas? Possibly, in a narrow set of cases, under the Ninth Circuit's famous-marks exception if you sue there, or under Section 43(a) in the Fourth Circuit if you can show U.S. commercial injury. The Second Circuit rejects the federal famous-marks doctrine. The reliable answer is to file in the United States.

What happens to my foreign protection if my U.S. application is refused? If the refusal becomes final within five years of the international registration date, the international registration is cancelled to the same extent, and you have three months to transform each designation into a national application that keeps the original date.

Does a Chinese registration of my brand by my distributor belong to me? Not automatically. You will need to invalidate it or obtain an assignment, typically relying on China's agent-and-representative and bad-faith provisions, your contract, and evidence of the relationship. Act quickly; some deadlines run five years from registration.

Do I need a U.S. lawyer if I am a foreign company filing in the United States? Yes, if you are domiciled outside the United States. The USPTO requires a U.S.-licensed attorney for foreign-domiciled applicants and registrants.

Takeaways

  • Trademark rights are national. Plan country by country, starting with where you manufacture and where you will sell in the next three years.
  • Use the six-month Paris window. It is the cheapest protection against squatters.
  • Use Madrid for breadth, but base it on a solid U.S. mark and watch the five-year dependency period.
  • File national applications where Madrid's U.S.-based specification is too narrow, and file local-script marks in China and other non-Latin markets.
  • After Abitron, U.S. courts police U.S. commerce. Foreign infringement requires foreign registrations and foreign enforcement.
  • Famous-marks protection in the United States is unpredictable and circuit-dependent. Foreign owners should file here, not litigate fame.
  • Lock down distributors and manufacturers by contract, record marks with customs, and watch foreign registers.

This document is general information, not legal advice for any particular situation; the law changes, foreign law in particular, and the facts matter.

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