Trademark Protection Outside the U.S.

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When deciding whether to extend your trademark protection outside the United States:

Are there foreign countries in which you are currently using your trademark, or likely to be using your mark in the next 1-2 years?

If so, your brand may benefit from filing an individual national application in each country in which you are currently doing business or intend to do so in the near future. Depending on which countries you wish to seek trademark protection, it may make more sense to file a European Union Community Trademark (CTM) application or a Madrid Protocol application.

Both applications have advantages that make an international trademark protection strategy more affordable. The CTM application covers all European Union countries. The Madrid Protocol application covers 86 countries and is considered an international registration. For both the CTM and Madrid Protocol application, you are preparing and filing a single application and designate those countries in which you want to seek trademark protection.

Each designated country has its own filing fees, but these applications save the expense of retaining local counsel in each country to prepare and file an individual national application. You may still need to retain local counsel to help with the examination process, but similarly, you may not.

Are your goods manufactured, or do you intend to manufacture goods, outside the United States?

Even if you are not selling your goods outside the United States, trademark protection in your manufacturing countries can be critical. If a third party registers your mark in the country in which your goods are manufactured, those goods may never make it to the United States. They could be seized and destroyed during the export process.

Trademark protection in the United States is based on use. In most other countries, however, there is no use requirement for obtaining a trademark registration. If a third party files for and secures a registration for your mark in a foreign country, it may be very costly or impossible for you to resolve the situation.

Two high-profile examples of expensive failure to secure trademark protection in foreign countries include Apple and Starbucks. Apple paid a $60M settlement to a Chinese business that owned the iPad trademark registration in China and was attempting to prevent iPad exports from China. Starbucks lost its trademark protection in Russia thereby allowing a trademark squatter to register Starbucks and demand a $600K price tag.

Are their foreign countries to which you might expand your business to sell your goods and services within the next 5 years?

If these countries have a reputation for trademark squatting, individuals or businesses registering your identical trademark in their countries, it could be worthwhile to seek trademark protection in these countries earlier rather than later. While big brands such as Apple and Starbucks may be a trademark squatters top targets, small and medium-sized businesses with seemingly large market potential are also targets.

Finally, there are additional considerations when developing an international trademark protection strategy that you can and should discuss with your trademark attorney when looking to build your trademark portfolio.




About the Author:

Barbara Alexander is licensed to practice law in California (2002), Georgia (2010), and Nevada (2001). Her passion for intellectual property dates back to the mid-90s when she returned from living in Dublin, Ireland to work for a Boston-based venture capital firm, investing in life sciences and technology companies. Attending law school in Washington, D.C. at Washington College of Law, American University from 1998-2001, Barbara’s legal training focused on federal law – of which trademark, copyright, and patent are a significant part. Barbara started Alexander Legal LLC in January 2014 to offer clients more personalized service at a better price point than larger firms can offer.
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