Foreign seller using US Trademark -Can I get away with it?

[blakez]

I am a Canadian although I live in Asia. My eCommerce website is hosted in the US however.

Someone from a US corporation emailed me to politely let me know that one product on my website uses a term that is trademarked by them. I looked it up and I was surprised to see that it is true. But since I am not an American, and I do not do business in the US, is there anything that can be done? I do sell to US customers though, and as I said, my website is hosted in the US. From what I understand, and US Trademark is only applicable in the US so does it apply to me at all?

The product that happens to use their trademark fits a vehicle that is not even available in the US so that product would never be sold to US customers. I would also like to find out if the company has trademarked this term in other countries, particularly Thailand where I live.

When I started this business, I used my Canadian permanent address for it although now we are not doing any business through Canada with the exception of simply selling to Canadians but shipping the product directly from where its produced to the Canadian buyer. But if someone looks it up online, they can likely find my permanent Canadian address associated with the business. I no longer have a Canadian tax number, or business bank accounts in Canada. As of next year, I will officially be a non-resident of Canada.

Please let me know what you think of this situation and if I should stop using this term that is trademarked in the US. Thank you very much for any info and please feel free to let me know if you need more information.

 

[Mass_Shyster]

Where are you selling this product?

 

[blakez]

I stay in SE Asia, my website hosting for my online store is in the US, and I sell my products to people all around the world. The product using that trademark sells to anyone other than Americans and Canadians though as the vehicle the product fits is not available there.

 

[quincy]

The information you have provided is much too vague to tell you whether you can "get away" with using the U.S. trademark on your product.

Because you have been notified by the U.S. company that a term you are using on your product is trademarked, however, this obviously indicates that the U.S. company is aware of your use and could potentially be considering legal action of some sort. Whether the company will take legal action to prevent your use, or whether the company has a good legal basis for taking legal action against you, is something I cannot tell you.

It is certainly possible for a company to sue for infringement - in the U.S., in Canada, or in Thailand - under the trademark laws of that country, should the use of the same or similar trademark on a product cause consumer confusion as to the origin of the product. It really depends on all of the facts and particulars.

I suggest you consult with an attorney in your area, to see whether the attorney believes there is a real risk to you of a lawsuit and to see whether the attorney recommends you withdraw your product, or at least eliminate the other company's mark from your product.

Good luck.

Edit to add: You can visit the following website for a list of Intellectual Property Offices around the world: http://www.wipo.int/directory/en/urls.jsp.

And, as additional notes, in the U.S., it will be the first use in commerce that (generally) determines ownership in a trademark, whereas in many other countries, it will be first registration of a trademark that determines ownership. Also in the U.S., a mark does not need to be registered with the USPTO to be afforded trademark protection under U.S. trademark laws. To check for trademarks in the U.S., therefore, it is often not enough to check federal or even federal and state registration. Trademark search firms can be a help in finding if a certain word or words are being used to identify a product or service.