PROTECTING TRADEMARK REPUTATION WITHOUT USE IN THE US

Trademark reputation without use is a jurisprudential paradox.  Because of the international flow of information, use of a trademark in one country may give rise to a commercially valuable reputation in another where that trademark has not yet been used. The goodwill arising from that reputation could be exploited by another party and consumers could be confused or deceived.  Unfortunately, the conventional view under US practice is no trade, no trademark.  This article, first published in the Autumn 2019 edition of World Trademark Review, examines two US Court of Appeals opinions which have created the possibility that a plaintiff could bring a passing-off action based on use of its trademark outside of the US only – a powerful new tool for challenging infringers that are first to use the trademark in the US.