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Whether your goods and services are distributed domestically or globally, your trademark is your most important asset. However, if your consumer-base is worldwide, there are several key considerations to keep in mind. Even if you successfully register your trademark with the United States Patent and Trademark Office, your brand will not be adequately protected in the global marketplace. This is because a U.S. trademark registration creates no rights internationally — each country has its own trademark laws and registration requirements.
It can be challenging to protect a trademark internationally. But it can be necessary if you intend to manufacture, sell, and package your products overseas — which can offer your company a competitive edge in an increasingly global market. In the event you are expanding your business to another country, taking the measures to file a foreign trademark registration can offer numerous strategic advantages to grow your brand and protect your bottom line.
Registering your trademark internationally can help you:
There isn’t one simple way to register a trademark in the global market. Each country has its own trademark regulations. However, many countries follow the Madrid Protocol which can allow you to file one registration for multiple foreign jurisdictions.
If you are marketing your goods and services in other countries, it is important to understand that the safeguards afforded by the USPTO do not apply outside of the United States. This means that you will have to take additional steps to apply for trademark protection in the jurisdictions where you will be selling your products.
The Madrid Protocol provides trademark owners with an efficient and cost-effective way to protect their brands internationally and manage their portfolios. More than 100 countries participate in the Madrid Agreement, which allows for one standard application to be filled out for each country where you seek registration, instead of applying with each individual country. In addition, there is only one renewal date — making it easier to keep track of deadlines and eliminating the need to file renewals with each specific country.
Although the European Union countries are part of the Madrid Protocol, Europe also has its own trademark system allowing one application to be filed for registration in its member countries.
Notably, while some countries such as the United States follow the “first to use” rule, other countries give priority rights to those who are “first to file.” In these jurisdictions, trademark rights are usually given to the first to file an application, even if the mark has not been used in commerce. Filing early in such countries is crucial to avoid a third-party from lawfully owning the mark that represents your brand.
Trademark counterfeiting is a significant issue in the global marketplace. Foreign counterfeiters can steal logos, slogans, packaging designs, and symbols that represent a U.S. company’s brand from their websites and online marketing materials. Not only is counterfeiting a problem with luxury goods, but it is also a threat for small and medium sized businesses selling their products on the internet. However, U.S. companies don’t just face counterfeit issues overseas — counterfeiting is also problem when it comes to products entering the U.S.
A trademark holder should take the time to develop an international brand protection strategy that meets their company’s specific needs. While this can involve registering for trademark protection in the countries where the products are being sold and marketed, a trademark can also be recorded with U.S. Customs and Border Protection. This is separate from federal registration with the USPTO. Specifically, this type of trademark recordation can assist border agents with identifying counterfeit products and stop them from entering the country.
Companies can provide U.S. Customs with a product identification guide listing a description of the product, images of the product, registered trademark, and other details to combat counterfeiting. Businesses of all sizes can also schedule a webinar to train border agents in identifying their products, compared with counterfeits.
Marketing your goods and services overseas can put your mark at risk of infringement and counterfeiting if it is not properly protected. Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC, we work with entrepreneurs nationwide to help them meet their objectives of expanding their companies internationally and work with them to develop a comprehensive brand protection strategy. Contact us today to schedule a free 15-minute consultation.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.
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