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.