14 Jan Protecting Your Trademark Internationally
As commerce continues to move more and more online, even relatively small businesses are able to create a vast impact internationally. That’s why it is important to consider how your brand is being perceived, consumed, and protected all around the world. Your brand is an investment, and it is one that needs to be protected, right from the very beginning. A strong protection plan can not only keep you out of court and out of trouble, but it can also help pave the way for your business’ growth and success.
Your Registered Trademark May Still be Vulnerable
Even though you have taken the initial steps to register your trademark with the USPTO, your brand could still be vulnerable to infringement, counterfeit, and other interference internationally. USPTO protections do not extend beyond US borders. In trademark disputes in other countries, your trademark registration may not be of much help. Whether you are selling products worldwide, sourcing or manufacturing internationally, or even making your digital services available to foreign customers, your trademark may be at risk.
Take Registration Seriously, and Do So Carefully
As a US-based company, you should always start your trademark protection process with the USPTO. If you have not yet, it is essential that you apply and register your trademark with the USPTO. Not only will this step protect your brand at home, but it will also offer you six months of priority filing privileges in other countries.
When filing with the USPTO, it is recommended to consult with an experienced trademark attorney. An attorney will help you draft your strongest version of your trademark registration application and will conduct a thorough search to make sure that your trademark can be widely protected and does not infringe on any existing trademarks. An attorney will also help you figure out which international classes should be included in your application. This will be important, should you decide to file for international protections, because the initial international classes may act as a limit on how broadly your brand can be protected.
Think Ahead and Identify Your Marketplace
If your business is in its early days, it can be hard to imagine where it may end up. How do you know whether your business will go international? What if you want it to expand in the future? Where would you even begin with international trademark protection?
At The Brand Protected®, we recommend that you start with what you know. Are you looking into using a particular manufacturer, distributor, or supplier from overseas? It may be smart to begin the international registration process there. If you have an online business, run analytics on where your customers are logging on. This can include who is viewing your website, downloading content, and making purchases. Another way to narrow the vast field of nations where you may need to register is to think about your target customer. If you are running a consulting business in English, you may choose to start with English-speaking countries. If you often import artwork from Thailand, perhaps begin there.
Some nations, like China and India, have a first-to-file policy. Unlike in the United States, this means that the first application received for a particular trademark is the one to hold the registration. The governing bodies will not look back at a history of use to determine whether the application is filed in bad faith. To avoid future litigation and losses, you may also want to file defensive trademark protections in these countries.
Overwhelmed? Start small: make a list of all of the countries your business currently touches, whether through suppliers, manufacturers, distributors, or customers. Then, add the countries where you do not currently have business contacts but may in the future. Once you have a working list, you can consult with an experienced trademark attorney to help you choose priority filings.
Be Mindful of Your Six-Month Window
As soon as you file your trademark registration application with the USPTO, a six-month window begins. During this time, you can file international trademark registration applications, and those applications can use your US filing date. Especially in first-to-file countries, an earlier filing date can make all the difference.
Do You Really Have to File Separate Applications for Each and Every Country?
Luckily, no. There is a treaty called the Madrid Protocol that is signed by 90 countries. Through a streamlined application process, you can file a registration application with all 90 of these countries at once. This doesn’t guarantee that your application will be accepted and your trademark registered in all of these countries, but it does take an enormous burden off of filing in each country individually. There’s a catch with choosing the Madrid Protocol method, however. Because the streamlined application is written for 90 countries, it doesn’t necessarily meet all requirements for each nation. For countries that require additional or more specific information than is contained in the broad Madrid Protocol application, you may have a harder time being successful with your application. If you have a particular country in which it is especially important that you gain trademark registration, it may make sense to apply directly to that country first before using the Madrid Protocol.
Once You Have Filed Internationally, Is Your Work Done?
If you have been reading The Brand Protected® for a while, then you know the answer is no! Trademark protection is never fully done. Once all registrations are in place, trademarks need to be monitored and enforced, both locally and internationally. Counterfeiting and intellectual property theft are big international businesses, and it’s your job to monitor your business assets, including your brand name. However, you don’t have to do it alone. An experienced trademark attorney can help you monitor and protect your brand for years to come.
If you are thinking about protecting your brand both domestically and abroad, click here to schedule an appointment with The Brand Protected®. We will work together to develop the best possible trademark protection plan for your business.