5 Steps to Protecting Your Trademark Internationally

By Josh Gerben, Esq.

The protections you receive as a U.S. trademark owner are a valuable asset to your business. However, it is important to know that those protections only apply to trademark disputes within the United States. Whether your retail store reaches customers in Europe or you plan to manufacture products in Asia, it is time to consider protecting your trademark internationally. These 5 steps will help ensure that your trademark is protected where you need it most.

Choose a Strong Mark from the Start

The trademark you choose is often the first thing a customer recognizes about your brand, and a strong trademark should also protect against infringement.  Because of this, it is important to take the time to choose the right mark for your brand.  The United States Patent and Trademark Office, or USPTO, recommends avoiding generic or descriptive language in your trademark, as these won’t be protected.  Instead, consider a trademark that only hints at the product or service being offered or one that is completely made up.  Starbucks and Nike are both strong trademarks that have nothing to do with the product being offered.

If you plan to register your trademark internationally, either now or in the future, you may also want to consider how the mark will be translated or received in other countries.  For example, there are several ways to translate a trademark from English to Chinese, including literally (“Apple” translated literally is PING GUO) or phonetically (“Boeing” is BO YIN).  You will also want to ensure that your English trademark is not in some way offensive internationally.  Popular baby food maker Gerber, for instance, has difficulty in France, where “gerber” is a slang term for getting sick.

Register your Trademark with the USPTO

If you are a US-based business it can be very helpful to file your trademark application at the USPTO as the first step to filing overseas.  This is because it is typically easy enough to get your US filing made.  Once your US filing is made, the US filing date becomes your priority date in any other country that you file in within six months of the US filing.  In other words, a trademark filing in the US will give you priority in every other country in the world for a six month period (so long as you file an application in a particular country within that six months).

Once you’ve decided on a strong mark, you will begin the process to register with the USPTO by completing a comprehensive trademark search.  This will alert you to any confusingly similar mark.  Some businesses and individuals take the do-it-yourself approach to conducting a trademark search and registering with the USPTO.  While this seems like the budget-friendly option, it can often cost you more in the long run.  Typically, DIY trademark searches are not comprehensive, and therefore, could cause you to unknowingly infringe on an existing mark.  Working with an experienced trademark attorney will ensure that you will not infringe on the existing mark as you move forward with your application.

In addition to conducting a comprehensive trademark search, your trademark attorney will also help you to determine which international classes need to be included in your application.  This is especially important if you plan to register internationally, as some countries’ filing methods will not allow you to use a broader scope of international classes on their applications.  Be sure to discuss all immediate and future uses of your mark with your attorney before you file with the USPTO.

Identify Target Markets where Protection is Needed

The decision to seek international trademark protections may seem overwhelming at first.  Begin by taking a look at where you are currently doing business.  If you are working with an overseas manufacturer or distributor, you should first begin the international registration process there.  If your business is online, research customer data to determine where your current customers are, and where your target markets may be in the future.  For instance, the owner of an online winter sports store may want to consider registration in Canada before the Caribbean.

Once you have a list of current markets, take a look at your goals for the future.  Perhaps you want to expand your product line to South America or you are considering overseas manufacturing.  Any country that you plan to reach through your business could be a strong candidate for registration.  Your trademark attorney may also recommend a defensive trademark protection strategy, by registering your mark in first-to-file countries like China and India before it is registered in bad faith by someone else.

The goal in this initial stage is to produce a list of countries in which you would like your rights to extend.  Once you have that list you can then get a quote from your trademark attorney on how much it will cost to protect the trademark in all the countries you selected.  From there, you can trim the list, if necessary, to get within the budget.

Register Internationally

Once you’ve filed an application for your trademark with the USPTO, you can begin the process to register internationally.  In fact, it can be beneficial to file internationally soon after you’ve filed in the U.S.  If you file your international application within six months of filing with the USPTO, you can use your U.S. priority date on the application.  This means that anyone looking to file a similar trademark application in those countries after that date may not be approved.  In first-to-file countries like China, this advantage could prevent bad faith registrants from beating you to the trademark office.

When registering internationally, you have a few options.  The first is a treaty called the Madrid Protocol.  Filing through the Madrid Protocol allows you to apply to any of its 90 member countries with a single application in your home language.  While this application streamlines the filing process, it does not guarantee that you will be approved in each country.  Those decisions are made on a country-by-country basis.  The Madrid Protocol is often the best option if you plan to register in several different countries.

The second option is to apply directly to each county’s individual trademark office.  While this is much more time intensive than filing through the Madrid Protocol, it may increase your chances of approval in each country where you apply.  This is because the Madrid application is very broad and often does not account for the detailed requirements of each individual country.  Filing directly with each trademark office allows you to tailor the information to the requirements of each country.  If you plan to protect your trademark in only a handful of countries, this may be the right route for you.

Monitor and Police the Use of Your Mark

To protect your trademark, you must monitor and police its use locally and internationally.  Once your mark has been registered, begin using the ® symbol.  Include it anywhere your trademark is displayed, from product labels to websites, and it will serve as public notice that the mark is federally registered and protected.  Most people won’t knowingly infringe on a registered mark, so this simple mark is often enough to deter potential misuse.

Unfortunately, there are some people that seek to infringe on a trademark for their gain.  Counterfeiting is now a trillion dollar business globally, and much of that comes from countries like China and India.  Monitor your trademark both online and on the ground, where your products are being manufactured or sold.  Being knowledgeable about your trademark rights in each country is essential to protecting your trademark internationally.  Speak with a trademark attorney to learn more about how to police your registered trademark.

Because you’ve worked hard to develop a unique product or service, you want to be sure it is protected.  Choose a strong trademark to represent your brand and work with an attorney to register with the USPTO.  Then you can develop an international trademark plan and begin the process to register internationally.  Finally, you must monitor and police your trademark to maintain its strength.  International trademark protections are an important aspect of a growing business.  Consider beginning the process to register internationally today!

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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.