Is your brand expanding outside the U.S.? Do you need an international trademark registration? The process can confusing to say the least. Here are some basics you need to know.
An international trademark registration goes to the first to file.
Trademark rights in most of the world are secured by the first to register, not the first to use a trademark. In the US a prior unregistered user can potentially obtain superior rights to the first to register at least in markets where the mark was used prior to filing. Not so overseas. If you are likely to expand overseas, it’s important to plan ahead and secure filings in important territories early on.
Don’t be held a hostage to fortune the way Pinterest has found itself. Pinterest recently lost the right to register and use Pinterest in all of Europe because it waited two years to file a trademark.
Pinterest launched in 2010 but did not even file its U.S. trademark application until 2012. In the meanwhile a British start up called Premium Interest filed first and was held to have prior rights. Pinterest’s efforts to prove it had territorial rights were rejected. Pinterest Loses European Trademark
“By setting up and using their site in the US, starting to promote it elsewhere, and delaying for whatever reason their own trademark applications, Pinterest were always a hostage to fortune.”Christopher PettConsultant at Dehns
Ways to secure an international trademark registration
There is more than one way to obtain an international trademark registration so the details get complicated.
1. File from the U.S. Trademark Office
If you have a valid U.S. trademark registration you file in many countries around the world directly from the Trademark Office using the Madrid Protocol. While we use this there are several pitfalls and it is often not a good idea. Here’s why:
- The U.S. registration must remain valid and in effect. If it is challenged or the application is denied, you will also loose all registrations in other countries on which it is based. It’s never a good idea to file this way if your trademark registration has not already issued.
- U.S. registrations are granted only for the specific goods or services for which you can prove use. In other countries, registrations are granted for multiple goods and services without need to prove you are selling these items. This means a direct filing in a country can be broader and much more effective and relying upon your U.S. Registration.
- Foreign countries issue objections and Office Actions through the World Intellectual Property Organization (WIPO) in Geneva. The procedures for receiving notices are slow and often unreliable. Some countries like China have very short response deadlines. If you don’t get the notice and fail to respond, you’ve lost your application and will have to start over.
2. File Through a trademark law firm
My firm has invested many years meeting and hiring firms in many countries around the world. Our foreign associates are highly skilled experts in the laws of their countries and provide our U.S. clients with excellent services. Here’s why we count on them:
- Local lawyers are required. Some countries, like Canada and Mexico are not yet part of the Madrid Protocol and we can’t file in those countries without using a local attorney.
- Local Deadlines are Easily Missed. Office actions under Madrid are often not received in a timely manner and deadlines are easy to miss. A local associate in the country will monitor the application and check for updates. They will also receive notices directly at their office, not through Geneva!
- Broader Protection for your Brand. I prefer the benefits of broader protection offered by direct filings. We can often file in three classes for the same price, and our clients don’t have to prove use. A good example is the European Union trademark where for the same fee, you can file in three classes for many goods and services even if not in use. If Madrid is used from the U.S., you are limited to filing for only the same items actually registered and in U.S. The result? The protection in these 27 countries will be very narrow and at a disadvantage to local filings.