Why the Time Has Arrived to Broaden Protection of Foreign Trademarks in the United States and Why It Won't Happen

By Ayer, Michel J. | Journal of Corporation Law, Summer 2007 | Go to article overview

Why the Time Has Arrived to Broaden Protection of Foreign Trademarks in the United States and Why It Won't Happen


Ayer, Michel J., Journal of Corporation Law


I. INTRODUCTION

II. BACKGROUND

  A. The Doctrine of Territoriality

    1. The Lanham Act

    2. The Early International Agreements

      a. The Paris Convention
      b The Madrid Agreement

    3. The Madrid Protocol

  B. The Use and Intent to Use Doctrines

III. ANALYSIS

  A. The Madrid Agreement

  B. The Madrid Protocol

  C Relief Under American Domestic Trademark Law

IV. RECOMMENDATION

V. CONCLUSION

I. INTRODUCTION

"[T]rademarks are unusual because the reputation of a product can reach a remote foreign market long before the owner of the mark for the product has begun or even had any opportunity to actually market there." (1) With the influx of immigrants to the United States, particularly from Latin America, many entrepreneurial early arrivals have appropriated brands of their homelands in setting up businesses in the United States. Additionally, savvy Americans are recognizing popular brands during their travels and employment abroad and using such brands upon their return to the United States without the origin-country firm's permission. "It may be unethical for a U.S. company to use a brand developed by a foreign firm outside of the U.S., but U.S. law doesn't make it illegal--unless the original brand has registered its trademark here." (2) With the increasing importance of an international economy, this situation raises the issue of whether it is time to change American trademark law to provide some increased level of protection to foreign firms whose brands are "unethically" used in the United States. "Globalization demands effective tools that extend trademark protection beyond national boundaries and the safeguard of intellectual property rights worldwide." (3) With an apparently ever increasing push towards regional "fair" trade, encapsulated by the North American Free Trade Agreement (NAFTA) (4) and the Central American Free Trade Agreement (CAFTADR), (5) this issue has special significance in regards to our Latin American neighbors, particularly Mexico. Although the United States participates in a global economy, our trade relationship with Mexico and other Latin American countries and their respective firms is increasingly important to our nation's economic health. (6) "Today, Mexico is America's second-largest trading partner, and we are Mexico's largest." (7)

This Note reviews tile origins of American trademark protections, especially to non-domestic companies, examines the scope of the current situation in which foreign firms' marks are being unethically used by U.S. companies, and recommends possible solutions under U.S. and/or international legal regimes to provide adequate trademark protections to Latin American firms in today's international economy.

II. BACKGROUND

The United States has long been the dominant economic power in the Western Hemisphere. (8) Much of that power comes via trade with our neighbors to the south. Mexico, (9) and other Latin American countries, (10) are vital components in the American economic machine. Traditionally, however, intellectual property rights have received only varying levels of respect by Latin American countries. Historically, all too often, American companies faced piracy of their marks south of the border and either had to purchase their marks back in those countries, engage in litigation in the courts of the Latin state, or withdraw from the market entirely. (11) Today, although such scenarios continue to be a legitimate concern for American firms, foreign firms from around the globe are increasingly finding that their marks have been "pirated" in the United States. (12) This situation leaves foreign firms to defend their marks under United States domestic law or possibly one of several international trademark regimes. (13)

A. The Doctrine of Territoriality

The traditional underpinnings of trademark law rest upon the doctrine of territoriality. (14) The doctrine of territoriality is incorporated both into the United States domestic trademark law, (15) and international trademark registration and protection regimes. …

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