International Trademark Filing Strategies: How, When & Where to File a Trademark Outside the U.S.

By Josh Gerben
January 14, 2019

International Trademark Filing Strategies: How, When, and Where to FileIf you are a business owner or entrepreneur, you no doubt know the value of having a federally registered trademark.  You are aware of the protection it provides your business and brand, and the need to constantly police your mark to maintain your business reputation.  You are also aware of the risks associated with choosing to not register your mark.  While the rights and protections you have as a trademark holder are a valuable asset to your business, they only apply to your use of the mark—or the use of others–within the United States.  If you currently do business in another country, you’re considering expansion, or there’s a possibility your online presence will reach customers abroad, you may want to consider filing an international trademark.

International trademarks were once only necessary for large scale businesses and corporations.  In today’s global marketplace, however, nearly any business, especially a business with online exposure, should consider filing for an international trademark.  With the rise of counterfeiters and cybersquatters in other countries, like China, protecting your brand at home and across the world may be more critical than ever.  Having a strategic trademark plan on a global scale will ensure your brand’s value will be managed by you, not an imposter from a country half the world away.  Consider the following as you begin the process to register your trademark internationally.

How to File an International Trademark

If you’ve recently registered your trademark with the USPTO, you know the process can be tedious, and the thought of completing a trademark application for each country you wish to register in may seem overwhelming.  While there isn’t a one-stop shop that allows you to register in every country at one time, an international treaty, the Madrid Protocol, has simplified the process.  This allows you to file only one application, in one language, to the World Intellectual Property Organization, or WIPO, which can be applied to the 90 countries affiliated with the Madrid Protocol, saving you time, money, and stress.

Once you have filed your basic trademark application with the USPTO, you can submit an international application, which will be reviewed by WIPO and then forwarded to the member country in which you wish to apply.  This application should be submitted by the same owner that submitted the original application.  The goods and services provided with the mark must also match the original application, or be smaller in scope than what is being offered in the U.S.

With all that said, there are limitations to the Madrid Protocol.  It does not cover all of the countries in the world.  Notable exceptions are Brazil and most South American countries along with most of the Middle East.  For these countries you will need to file an application with that country’s trademark office directly using a local attorney.

When to File an International Trademark

Ideally, you should submit your international trademark application as soon as possible, once your basic application with the USPTO has been filed.  One reason to move swiftly is your priority date.  Much like the process when filing your U.S. trademark registration, most countries consider the date in which you file your priority date in that country.  This means that if someone wishes to register a similar trademark after this date, the application could be denied.

Another reason to take quick action is to beat squatters and counterfeiters in other countries to the punch.  Unlike the United States, where trademark rights are typically reserved for the first person to use the mark (and requires actual use to maintain a registration), many countries often give rights to the first person to file for the trademark.  Unfortunately, counterfeiting and squatting, the act of filing for a trademark with the intent to ransom that trademark to its rightful owner, are big businesses in other countries.  Waiting to file in countries like China and India, where the first person to file is given the rights, could mean that you will end up locked in a long legal battle or paying a hefty ransom in order to have control of your mark in that country and around the world.

Where to File an International Trademark

Deciding which countries to register your trademark may seem like an overwhelming task.  First, consider where you are presently doing business.  If you currently have an overseas distributor or manufacturer, you’ll no doubt want to file there first.  If you own any sort of online retail store or business, you’ll want to take a look at where you are currently generating customers, as well as the countries with large populations of your target market.  For instance, the owner of a company with an online bathing suit store may want to consider registering in New Zealand before the Netherlands.

Once you’ve developed a list of current markets, look ahead to where you want to be in the next few years.  Are you planning to move your manufacturing overseas or roll out a new marketing strategy for Europe?  Are you moving from a brick and mortar storefront to a solely e-commerce business?  Any country you hope to touch through your business in the coming years may be candidates for registration.  You may also want to consult an experienced trademark attorney to discuss a possible defensive strategy, by registering your trademark in countries where counterfeiting is common.

In this growing digital age, it isn’t too far fetched to think that a small coffee roaster in Washington could have customers in Portugal or the Philippines.  As your business plan evolves and expands, your trademark strategy should expand as well.  Be sure to be diligent in policing the use of your mark in the U.S., as well as internationally.  A trademark is a critical part of protecting your brand and its reputation, but only if you enforce your legal rights as a trademark holder.

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The Author

Josh Gerben

Josh Gerben is a Trademark Lawyer and the founder of Gerben Law Firm, PLLC a trademark law firm that has secured over 4,000 federal trademark registrations for clients since 2008. Josh has been featured in a wide range of local and national news outlets, including NPR, The Washington Post, The Wall Street Journal, Fox News and more.

For more information, or to contact Josh, please visit his Firm Profile Page.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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