The Monroe Doctrine of anti-colonialism is contrasted with the belief in manifest destiny in US history (and in recent news we have seen the ‘Donroe doctrine’).

What we end up with today is, aside from the contiguous or mainland United States and the more isolated states of Alaska and Hawaii, is a US with five territories with permanent populations: American Samoa, Guam, the Northern Mariana Islands, Puerto Rico, and the US Virgin Islands.

There are also some islands with small non-permanent scientific or military populations that collectively form the ‘United States Minor Outlying Islands’. They are typically more of interest to WWII history buffs.

How does trademark protection work in the US territories?

Federal US trademark legislation – the Lanham Act – states that the US “includes and embraces all territory which is under its jurisdiction and control”. Excellent news – a US registration therefore covers all of the US territories.

To qualify for protection at a federal level, it is required that a trademark is used in interstate, international, or territorial commerce. This can be within a single US territory, which contrasts to, say, use only in Hawaii (if it does not bring in customers from other states) which would not qualify for federal trademark registration; that use would need to be between Hawaii and at least one other state (or US territory, or internationally).

Therefore, a small business using their trademark in, say, only American Samoa (population around 50,000) could obtain a federal trademark registration. In the grand scheme of the US (including all of its states and territories – a market of c. 342 million), this would represent low level use but genuine use, nonetheless. Contrast this with the situation in the EU where low levels of use in the EU may not be regarded as sufficient genuine use to prevent revocation of an EU registration on the grounds of non-use.

It would be amiss not to mention that in the US it is use that is king for trademarks and common law rights exist, limited to the specific geographic area of use, simply for using a trademark including in the US territories.

Nevertheless, four of the five permanently inhabited US territories have their own local trademarks laws, which provide their own registration system. The one that doesn’t is the Northern Mariana Islands.

Is there any point in registering locally, in particular, if you have a federal registration?

Federal trademark registrations and common law trademarks are not mutually exclusive. While it is a little more subtle than this, registration in the territories is a way of recording common law rights. Common law trademarks that pre-date federal registrations continue to have protection limited to the geographical area used. This plays an important role in searching of marks and demonstrates the rationale for including Common law searches and State/Territorial Register searches in clearing marks for use in the United States.

You can register in these territories without parallel federal registration, with the exception of the US Virgin Islands where local registration is by way of ‘extending’ a federal registration. Both Guam and Puerto Rico allow applications on the basis of intent to use. If the interest in the territories is limited in such a geographical way, this could be worth considering from a cost viewpoint as registration fees tend to be fairly low. It’s low cost in the US Virgin Islands too, but you do need to first get a federal registration.

Speed is also a consideration. This could be speed of registration, although an application in Puerto Rico is, on average, likely to take as long or longer than registration at the USPTO.

It could alternatively be speed of enforcement, which admittedly may be tied to speed of registration. Enforcement could be on online marketplaces, in domain disputes or infringement claims in court. It is important to note that only a federal registration can be recorded with US Customs and Border Protection to prevent the importation of infringing foreign goods, however.

For territorial trademark cases, these would be heard by local courts, as opposed to the federal courts for infringement cases under the Lanham Act. For Puerto Rico, a case tried under territorial law means it would likely be heard in the Spanish language. If you have a federal case in American Samoa, you’d need to go to court in Hawaii or the District of Columbia as it does not have a court locally capable of deciding on federal trademark infringement.

Whether a local court would be preferred versus a district court would be a question of facts and is unlikely to be a case of forum shopping. Given the strength of federal registration, a federal court would likely be preferred but if your case is not as strong as you like and you fear a counter challenge to your mark’s validity (particularly if your federal registration is not incontestable), you may opt to rely on a local registration in a local court.

Puerto Rico’s trademark law is particularly strong. Registration there is prima facie evidence of ownership and exclusive right to use. It also recognises secondary meaning (acquired distinctiveness as we call it in Europe) which – depending on the extent of use – may be available locally but not federally. Furthermore, a Puerto Rican trademark registration can be cited against later local filed applications; the Office, however, will not search or raise citations from the Federal Register, providing an added reason to register locally.

In these territories, you may also have licensing partners. This could be more prominent than in the continental US given the geographic remoteness of the territories may make the logistics of operating directly more difficult. While, of course, federal registrations can be licensed for a specific geographic area – and it is all about the strength of the underlying licence agreement – it could give some comfort to only licence the use of a local registration.

In conclusion, registering at territorial level may be considered a “belt and braces” approach if done in addition to federal registration. Of course, adding more surety to holding up your trousers (or should we say shorts in the warm climates of these territories?) can’t be a bad thing if the territories have any commercial importance to you.