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An Expensive Reminder to Secure Trademark Rights Prior to Foreign Expansion

Electric car manufacturer Tesla Motors was recently sued in China by businessman Zhan Baosheng. Baosheng registered the TESLA trademark in China in 2006, prior to Tesla's entry into the Chinese market. The lawsuit demands that Tesla pay Baosheng $3,850,000 in damages for trademark infringement, and demands that Tesla stop all sales and marketing activities in China, including shuttering all showrooms and Tesla's supercharging facilities. Arguments in this case are scheduled to be heard in August.

Even if Tesla ultimately wins this battle with Baosheng, the case serves as a timely reminder of how important it is to file trademark applications early in the business planning phase – particularly in first to-file countries, such as China, Argentina, Brazil, Japan, Mexico, and many others. Unlike in the U.S., where trademark rights can only be acquired and enforced based on use, in many other countries rights are based on who was first to file. If you are planning on expanding your business outside of the U.S., be sure to include international trademark filing in your budget.

© 2017 Sterne Kessler

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About this Author

Monica Riva Talley, Trademark Attorney, Sterne Kessler, Law Firm
Director

Monica Talley brings more than 17 years of experience protecting some of the world's most recognizable brands to her role as a Director in the firm’s Trademark practice.  Ms. Talley specializes in strategic trademark counseling and portfolio management, developing anti-counterfeiting solutions and strategies, and trademark enforcement. 

Ranked as one of the leading trademark prosecution and strategy attorneys in Washington, DC, Ms. Talley is particularly noted for her global brand protection and commercialization strategies, and is lauded by clients for utilizing “her broad IP savvy...

202-772-8688
Tracy-Gene Durkin, Mechanical Patent Trademark Attorney, Sterne Kessler law firm
Director

Ms. Durkin leads the Mechanical Patent and Trademark Group.  With over twenty years of experience obtaining and enforcing intellectual property rights, she melds her expertise with utility and design patents, trademarks, and copyrights to create a unique IP protection strategy to meet her clients' individual needs.  Ms. Durkin’s experience includes helping clear new products and trademarks for use in the marketplace, selecting appropriate IP protection, and enforcing such protection through mediation, litigation and licensing.  She is sought out for her knowledge of design patents, brand development strategies and eliminating copycat consumer products from the marketplace to prevent the devaluation of IP rights

202-772-8660
Julie D. Shirk, Patent & Trademark Specialist, Sterne Kessler Law Firm
Patent & Trademark Specialist

Julie D. Shirk joined Sterne Kessler in 1989 and continues to specialize in patents and trademarks in the firm's Mechanical Group.

202-772-8632