First to Use vs. First to File: Global IP Explained

Short Summary

Did you know your US trademark stops at the border? In this episode, Pankaj Raval and Sahil Chaudry dive into the complex world of international intellectual property. They explain why the "First to File" system in other countries creates a massive risk for US brands, how Apple got held hostage for $60 million over the "iPad" name in China, and why influencers need to trademark their TikTok handles to fight copycats.

Takeaways

• US Protection is Local: A US trademark does not protect your brand globally. If you sell or manufacture overseas, you are exposed.
• First to File vs. First to Use: The US uses "First to Use" (you own it if you use it). Most other countries use "First to File" (whoever files the paperwork first owns the brand, even if they've never used it).
• The Squatter Risk: Because of "First to File," bad actors can register your brand in China or Europe before you do, forcing you to buy it back from them.
• WIPO/Madrid Protocol: You can use WIPO to file in 100+ countries at once. It's cheaper (~$5-10k), but carries a "Central Attack" risk: if your home application fails, your entire global portfolio can be invalidated.
• Manufacturing Protection: You should register trademarks in countries where you manufacture (like Mexico or China), not just where you sell, to prevent factories from selling your goods "out the back door."
• Social Media Handles: Trademarking your handle gives you a legal weapon to force platforms like Instagram and TikTok to take down copycat accounts that use confusingly similar names (e.g., adding an underscore).
• Use It or Lose It: You must monitor your brand globally. If you allow infringement to continue without sending a cease and desist, you can lose your rights to enforce the mark later.

Soundbites

• "If you're the first to file a name, even if you're not using it, you're going to get rights to that [in other countries]."
• "Apple fought that for a long time... someone registered the iPad trademark in China."
• "What's more expensive for you? To incur the expense now... or to deal with that expense later when you're unable to sell your product?"
• "If your name is popping up and people are using your name... that's terrible for your brand."
• "Some factories will try to sell your goods... under your brand name without you knowing."
• "You should be thinking about that [trademarking] first... Too many people come to us too late."
• "If you show them [social platforms], hey, I also have a trademark to this... they're going to be much quicker to act."

Keywords

International Trademark, WIPO, Madrid Protocol, Intellectual Property, Brand Protection, First to File, Apple iPad Case, Manufacturing Agreements, Social Media Law, Influencer Law, Cease and Desist, Global Branding, Carbon Law Group