Taking your trademark overseas

For many businesses, the marketplace is global. A trademark is a valuable tool that enables companies to attain instantaneous recognition in the vast, global marketplace. A trademark distinguishes a company and its offerings by providing customers with an instantly recognizable name, logo, phrase or other branding mechanism—and provide you with the rights to protect your brand's identity. If you're contemplating doing business abroad, foreign trademark registration may be appropriate for your business. Find out what is needed to protect your trademark overseas.

1)     The U.S. phase

If you have never applied to the United States Patent and Trademark Office (USPTO) for U.S. registration of your trademark, you will need to submit both a U.S. application and a separate application seeking protection in other countries, called an International TEAS form. If you have a mark that's registered or pending registration in the U.S., then you will submit an international application (called an International TEAS form) based on your U.S. application or registration—you can skip the portion of your filing that seeks U.S. protection, and submit only the International TEAS form. You then pay a fee to the USPTO for “certification,” which simply requests the USPTO to determine whether your application satisfies technical requirements—found at 37 C.F.R. §7.11(a)—and also your application fees to all the countries in which you want to seek protection. (Your USPTO certification fees are non-refundable, even if your application is refused to be certified.)

2)     The international phase

Following the U.S. Phase (and assuming that the USPTO certifies your application), your application travels from that office to the World Intellectual Property Organization (WIPO) in Switzerland for WIPO certification and is then published in the WIPO Gazette (also known as the “International Bulletin”)—at which point your international fees are non-refundable.

3)     The national phase

If your application passes WIPO muster, it then travels to all the countries in which you seek protection, to be assessed under the laws of those countries individually. The countries available to you [pdf] under this process are all members of a treaty called the Madrid Protocol. You may need to hire foreign counsel in some or all of the countries where you want to register your mark, should there be any proceedings (such as oppositions) in the trademark offices of those countries regarding registration of your mark. The countries designated on your Madrid application each have 18 months following WIPO to act finally on your application—whether to grant or refuse you registration. If you do not receive notification of acceptance or rejection from a country within 18 months of that country being notified of the application's publication by WIPO, your mark will be deemed accepted by the country pursuant to the Madrid Protocol, and automatically registered. As in the U.S., registration is valid for 10 years, after which renewal can be obtained.

4)     Some important considerations

There are some things to consider before using the Madrid Protocol. First, if you have applied to the USPTO for registration of a particular mark and that application had already been denied prior to your filing an International TEAS form, you cannot use it as the basis of a Madrid application. Second, you need to consider what is commonly called “Central Attack”—if your mark is attacked successfully in the U.S. during the first five (5) years following registration, you lose the same rights that you lost in the U.S. in every country that your Madrid application references. This is true even if an action against your mark is begun in the U.S. during that 5-year period but doesn't result in a loss of rights until after five years pass. Third, you should note that, unlike the U.S., most other countries register marks on a “first-to-file” basis, not a “first-to-use” basis. So, even if you're the first to use your mark in the U.S.—and even abroad—you may lose out to someone who has already filed to register that same mark: a textbook instance of this is Apple being unable to register the name “iPad” in China. There are other considerations to weigh—applicants considering using Madrid should become familiar with some basic information from the USPTO website as well as at the WIPO link above.

Your International TEAS form and the Madrid Protocol, generally, can be thought of as a kind of passport that allows you to fly out of the U.S., but individual countries will have the final say as to whether you can enter and stay there. Madrid is a great way to lower your costs—both in terms of time and money—when it comes to seeking protection of your trademarks abroad. Be sure that you understand the process and the pros and cons before you venture in. The better informed you are, the fewer surprises you will encounter, and the more you will benefit from this powerful mechanism.

For more information on foreign trademark registration, visit the USPTO. To search for international trademarks, visit the Gazette, where you can browse by origin of holder, search by international registration number, holder name and/or mark.