Legal Question in Intellectual Property in New York

Re: Logo Piracy on the Internet

Absolutely nothing prevents a foreign entity (and that includes someone operating in Canada and Mexico) from copying a mark registered ONLY in the US with the USPTO and selling the branded item in its own country, or in any other country where the logo is not registered.

However, within the US, if the PTO allows your registration, you can keep bootleg sales (including internet sales from a foreign website) at bay with constant vigilance. No one but you has the right to import an item with your mark, and if a site sells an item with a registered mark to a US citizen, the site's owner has put himself at the mercy of the US courts by reaching into the US and harming you, the trademark's owner, and the consumer who purchased the item.

A properly policed mark may have some trouble with bootleggers, but the courts enforce a validly registered mark. The courts are generally not very happy with trademark bootleggers within the US, and penalties against them are stiff, both civilly and criminally.

THE INFORMATION PRESENTED HERE IS GENERAL IN NATURE AND IS NOT INTENDED, NOR SHOULD IT BE CONSTRUED, AS LEGAL ADVICE. FOR SPECIFIC ADVICE ABOUT YOUR PARTICULAR SITUATION, CONSULT YOUR ATTORNEY.

Re: Logo Piracy on the Internet

The short answer to your question is that there is really nothing to prevent someone in another country from copying your logo and using it. The U.S. has treaties with various countries to address this matter and so you would have to know the specific country of the offender. However, its probably not going to be very appealing to you to file suit because little will be able to be done to address the wrong.

Re: Logo Piracy on the Internet

Once your mark is properly registered with the USPTO you can then file the mark in foreign countries as well via a fairly new development in trademark law called the Madrid Protocol which allows you to file and protect your mark in many other foreign countries as well. This area of law is our specialty, however, we would need some more information before making a complete and proper determination. You are welcome to contact us for a free consultation.

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