3 Tips for International Trademark and Brand Protection

By Josh Gerben, Esq.

As a business owner in today’s world it is likely that you are, at least, tangentially, in business internationally. That’s because you almost certainly have a website for your business, and that website theoretically gives the entire connected world access to your business, products, and services.

While the opportunities of the online marketplace are certainly compelling, when you look through the spectrum of trademark law and protection, that exposure can easily seem overwhelming. Should your product gain a high profile and international fame, you may – depending on your offering – become a prime target for infringement, counterfeiting, and deception in the digital shopping realm.

The Lanham Act covers U.S. trademarks, and, through its federal registration system, assists in the enforcement of trademarks in the United States. International trademarks are a different story, however, and it’s important to be aware of where you most need protection, and what benefits that protection affords you. In many jurisdictions, for instance, priority is given to the first individual or business to file a mark. Therefore, getting an application on file is critical to protecting your trademark rights in countries such as China, the UK and Europe.

Here are three hands-on, easily applicable tips for you to incorporate when considering trademark protection internationally:

1. Determine what countries are most important for your business and protection of your trademarks

Once you know where your products are most likely to be sought, you can make a more informed decision about where and when to register international trademarks. The Madrid Protocol enables you to easily file multiple international trademark applications at once, however, there are some drawbacks to the system which may make engaging a local attorney to file the trademark a better idea.  An attorney that is experienced in filing trademarks overseas can assist you in deciding on whether or not the Madrid Protocol is appropriate for your situation.

Whether or not you file through the Madrid Protocol, the fact remains that it is virtually impossible (practically and financially) to achieve full, blanket trademark protection worldwide. It’s likely better for you to zero in on the key regions and countries where your products are manufactured and/or are realistically likely to be desired – and, potentially, counterfeited or imitated.

2. File for trademarks in countries with risk of counterfeit products (such as China)

By “risk,” I mean not only the risk that your products will be imitated or counterfeited, but the risk that illicit formulations could pose to consumers.

For instance, in food products or medical supplements, consumers are actually ingesting what they purchase. If you’re in that line of business, it’s critical for you to closely control access to your product, and to be acutely aware of any potential counterfeit risks.  Trademark registration in countries where you manufacture your product and/or where your product gains popularity can also give you a more streamlined, efficient avenue to pursue cease and desist actions again imitators and counterfeiters.  This is critical protection when time may be of the essence.

3. Select your trademark with international considerations in mind

The strongest trademarks, in the eyes of the United States trademark law, are those considered “fanciful” – in other words, a brand-new word or phrase conjured from the trademark owner’s mind. Such marks are also strong internationally – they do not have an inherent tie to the English language, and so their meaning is tied implicitly to the product alone. There is no language barrier. Think of brands like Nike, Levi’s, and Reebok – those words have no other denotation aside from the products and ideas they represent.

Moreover, most countries outside the United States do not grant rights to trademarks that merely describe a product (the US provides limited protection to such trademarks).  Therefore, in order to have a brand name that can be registered and protected around the world your name must be highly unique.

We hope these tips were helpful.  If you have any further questions on obtaining registration of your trademark internationally, the attorneys at Gerben IP can help.  Simply complete a contact form on our Web site and one of our attorneys will reach out to you for a complimentary consultation.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.