Justin R. Muehlmeyer
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Global Trademark Strategy
If you sell abroad, consider registering your trademark abroad.
Markets are global, but your trademark rights are not necessarily so. The rights granted you in a trademark registration issued by the USPTO end at the border.
Companies and individuals that sell goods and services outside the United States should consider registering their rights abroad. Registration can make the difference between being able to enforce your rights abroad or not. In some countries, the first party to register a trademark has the exclusive right to use the trademark in that country regardless of who was using it first, risking all rights be lost to a subsequent user (unlike in the United States where a prior unregistered user may have rights in the mark).
Perhaps your presence in foreign markets may not be substantial enough to justify the expense of registering your mark there. Or perhaps you may not ever plan to enforce your rights in foreign courts anyway. While such may be the case, the discussion of whether, when, where, and how you should file abroad should be had as early as possible in your branding efforts, in part to ensure that you are taking the right steps to preserve your options.
File foreign applications within six months of filing your U.S. application to take advantage of its priority filing date.
Nations party to the Paris Convention will treat your trademark application as being filed the day your U.S. registration application was filed if you file within six months of the date you filed it in the United States. You can still file a foreign application at a later date, but that foreign application will not receive the benefit of the U.S. application’s filing date. For some, this deadline should not be let go, particularly if there is a risk of others using your mark abroad before you file there, or a risk of others filing for registration of your mark abroad before you do. On the other hand, you may prefer to wait until you know your market before you rush to file abroad in time to obtain the priority to their U.S. application. Either way, the decision should be discussed well before the deadline, so as to be aware of your options before the deadline passes.
One way to register abroad: by filing directly with individual national trademark offices.
Most nations maintain their own office for registering trademarks. Some nations have formed regional groups that, once registered with, grant rights in all the nations of the group, for example, the European Union Intellectual Property Office. U.S. trademark owners may obtain registrations abroad by filing directly with any number of individual national trademark offices and regional groups.
Direct filing in this way means you pay each office’s fees for the examination of your registration application and each office’s fees to maintain your issued registration. Local counsel must be hired for filing in each office. Each office will examine your registration application independently of the others, according to their own timeline.
Another Way to Register Abroad: an “International Registration” through the Madrid System administered by WIPO.
For some, particularly those who would like registrations in numerous nations, filing directly with the trademark offices of individual nations and groups is not the best way to register abroad. Since the United States joined the Madrid Protocol in 2003, U.S. trademark owners have had the additional option of obtaining rights abroad through the Madrid System administered by the World Intellectual Property Organization (WIPO).
Once you have filed for or obtained a registration in the United States, you can file for an International Registration (IR) by submitting an international application to the USPTO designating which nations or regional groups that are signatories to the system you wish to have rights in. The USPTO will submit your application to WIPO. WIPO examines the international application for formalities only, and if it satisfies, WIPO records the trademark in the international register, publishes the trademark and notifies the offices you designated so that those offices can begin their substantive examination according to their own domestic laws within 12 to 18 months of their notification.
Direct Filing or International Registration?
Filing an international application through WIPO can be more cost effective than filing directly with foreign offices for a number of reasons, including:
- you will only have one registration to renew;
- you don’t necessarily have to hire local counsel;
- changes in ownership, contact info, and the goods and services of the mark can be recorded through a single step; and
- the application can be filed in English.
On the other hand, there may be reason not to use the WIPO international registration system and to file directly with nations or groups, for example:
- an international registration is dependent on the U.S. filing for five years, meaning that if the U.S. application is abandoned, the international registration will suffer the same fate;
- applicants for international registrations that designate only a few countries may not realize significant cost savings by using the WIPO international registration system; and
- International Registrations may only be assigned (ownership transferred) to a person who is a national of, is domiciled in, or has an industrial or commercial establishment in, a country that is part of the system.
This discussion should be had as early as possible, so as to make the right choices for your branding and enforcement strategy.
Peacock Law can manage your global trademark strategy.
Peacock Law P.C. has the experience, knowledge and network to advise you on the best global trademark strategy and to accomplish it. We have handled countless international applications through the Madrid System, our foreign associates are capable of filing and taking an application to registration in most nations of the world, and Peacock Law has the experience and docketing systems necessary to manage a global trademark portfolio facing numerous deadlines and varying requirements. Peacock Law is how you generate value from a global trademark strategy. Give us a call today!