Related to yesterday’s post, I’m also thrilled to be speaking at a Doing Business in the U.S. program in Derry/Londonderry on the morning (8:30) of September 7, at Invest Northern Ireland’s office there. I’ll also be using the Invest NI office for the balance of the 7th as my ‘office’ in case people need to speak about U.S. expansion. Looking forward to it, and thanks to the great help from @investNI, @investNI_USA, @derry_chamber, and @investdcsdc. Contact Invest NI’s Derry/Londonderry office for more information.
I’m thrilled to announce that I’ll be giving a talk, at the Galway Chamber of Commerce, on September 12 on doing business in the US. I’ll be presenting with Mary Rogers, Innovation Community Manager, PorterShed (@portershed) & Founder & CEO, Stateside Solutions (@StatesidePortal). The program will discuss the following topics: (i) Starting at the start: why expand to the U.S?; (ii) Can your product be sold in the US and/or are there any pre-sale registration or approval requirements?; (iii) Do you need a U.S. affiliate entity? Considerations on form, jurisdiction and tax impact of U.S. affiliate entity; (iv) IP protections; (v) Controlling the contract(s); (vi) Product liability concerns; (vii) Insulating the Irish parent; (viii) Labour/employment/immigration; and (ix) Conclusion: Moving forward. This event will include time for Q&A.
Location: Galway Chamber, Commerce House, Merchant’s Road, Galway Date: Tuesday, 12th September Start Time: 8am Duration: 1 hr 30minutes Price: Free to attend Register here
My partner Montserrat Miller is an expert on workforce compliance issues, including compliance with employment eligibility verification requirements (the I-9 form). She also has her own blog at http://www.workforcecomplianceinsights.com/. Compliance with US employment eligibility verification requirements sometimes slips through the cracks for Irish and NI companies with US employees. It shouldn’t, since the penalties for non-compliance are high. Montserrat can help Irish and NI companies navigate these compliance issues, and she’s compiled a list of resources at http://www.workforcecomplianceinsights.com/2017/07/11/how-compliant-is-your-company-with-the-form-i-9-requirements/. Check out the link, and contact Montserrat (or me) with any questions.
Let’s say you have a lawsuit or an arbitration in Ireland or Northern Ireland and need to obtain evidence in the U.S. How do you do it?
My partner Gene Burd has written an article, recently published on the Young Arbitration Review, on the use of ‘1782’ actions in connection with international arbitrations. 1782 refers to the section of the United States Code that provides a process to obtain evidence in the U.S. for litigation/arbitration outside the U.S. Although Gene’s article focuses on 1782 actions in the arbitration context, the article provides valid insights for litigation. The article can be found here. Feel free to contact Gene (or me) if you have any questions.
After taking the survey at http://agglaw.polldaddy.com/s/irelandnisurvey and subscribing to this blog (see left column)…
Register the IP you’ll use in the US, most likely your trademarks. Many Irish and Northern Irish companies mistakenly believe that their home jurisdiction trademark registrations will be effective in the US. Nope. Also, some will think that the Madrid Protocol causes their home jurisdiction approvals to be effective in the US. Nope. The Madrid Protocol is useful in determining applicant priority, but doesn’t operate to extend a home jurisdiction registration.
I always encourage Irish and Northern Irish companies to inventory their IP that they intend to use in the US before they expand to the US. Part of that effort is to ensure that we’ve properly protected what needs to be protected, and part of it is to ensure that, to the extent needed, any intercompany agreements have the proper scope.
Logos, trade names, product names, etc., can be trademarked here. The US is not a first-to-file trademark registration jurisdiction (where the first to file may prevail even if they are not the first to use–China is, for example, a first-to-file jurisdiction). And, yes, the US does allow for common law trademarks that arise from usage. But the most effective way to protect the value of those marks–the value built in Ireland and Northern Ireland and leveraged in the US–is to register. A basic trademark registration can cost less than $2,500 (with no opposition or other weird developments), and that’s a small price to pay.
The reason I suggest that this is the second thing to do is timing–the USPTO takes a little while to review applications, and may have questions. This isn’t to suggest that you wait on US expansion until after you obtain appropriate registration–you shouldn’t–but you should have your registrations in motion (submitted) when you hit the US market.
Well, after taking the survey at http://agglaw.polldaddy.com/s/irelandnisurvey that is…
The first thing you should do when considering whether to export your product to the United States is determine whether the product can be marketed or sold in the United States, or if there are license or registration requirements in connection with marketing or selling your product here. From time to time, I have seen companies go through the time and expense of setting up operations here or take other significant steps, only to discover that their product either needs prior approval/registration to be marketed or sold in the US or can’t be imported here at all.
There is an obvious reason to think of this issue first–you don’t want to waste time, effort or money if they US market is closed to your product, or if your product needs a license/registration to be sold here. You should take into account the time and cost of a license/registration process when building and analyzing the economic/business case for expansion to the US market. Another, perhaps less obvious, reason is timing–you want to build enough lead time for your product launch in the US to account for any licensing/registration issues. You don’t want to leap into the US market without having a properly registered/licensed product.
Many products don’t need a license or registration to be marketed and sold here. But several products do, including products in areas where Irish and Northern Irish companies do well:
- Pharmaceuticals and medical devices require authorization from the FDA to be imported, marketed, and sold here.
- Certain ingredients in cosmetics are not allowed in the US (some ingredients may be banned on a state-by-state basis).
- Food and drink imports may need prior approval from the US Department of Agriculture.
- Medicinal foods require prior approval from the FDA.
- Certain consumer products–especially those that are used by children–may need to be reviewed by the US Consumer Products Safety Commission.
There are other products that require license/registration to be marketed and sold here.
The primary observation of this post is that you should be sure whether, and on what terms, your product may be imported, marketed, and sold in the US before you set up a affiliate, create a distribution network or take any other substantive step to expand here. It’s a small up-front expense compared to the expense of finding out later and having to correct a mistake.
The good news is that we’re going to re-start our webinar series on US legal topics for Irish and Northern Irish businesses expanding to/operating in the US. But we need your help: we’re looking for feedback on the topics that might be of interest to an audience of Irish/Northern Irish businesses, their advisors, and other interested parties. The survey is at http://agglaw.polldaddy.com/s/irelandnisurvey
Please take a moment to give us some feedback, and please feel free to forward along to your colleagues and contacts. Thank you in advance for your help.