If You Plan To Do Business Internationally, You Should Consider an International Application for Registration of a Trademark under the Madrid Protocol

In a recent post, we discussed a Community Trade Mark (CTM), and how it allows a trademark applicant to have protection within all countries of the European Union (EU).  When filing a Community Trade Mark, it can be done through The Office for Harmonization in the Internal Market, also known as OHIM.  However, that is not the only option.

The Madrid Protocol allows a trademark owner to file an international application for registration under the Madrid Protocol.  This can be done through the United States Patent and Trademark Office (USPTO) as long as the applicant is a national of the United States, a domicile within the United States, or has a real and effective commercial establishment within the United States.  The benefit of such an international application is that there is one filing fee, the CTM Trade Mark through the EU is an option, and all other members of the Madrid Protocol can be selected in order to give you protection in each of those countries. 

If You Plan to do Business Internationally, You Should File a Community Trade Mark

With the advent of the Internet, most businesses with a website can be doing business internationally.  Any e-commerce site would definitely have the potential, and likelihood, of reaching consumers in foreign countries.  Who truly knows where your product or service may be the most successful.  As such, it the prudent decision is to file for a Community Trade Mark (CTM).  A Community Trade Mark allows a registrant to protect a trademark in all of the countries of the European Union (EU) by filing a single trademark application with one single office, the Office for Harmonization in the Internal Market (OHIM).

The Importance of the Description of Goods and Services in a Trademark or Service Mark Application with the USPTO

There is a delicate balance a trademark applicant must achieve when filing for a trademark registration with the United States Patent and Trademark Office (USPTO).  On one hand, the description of goods/services must be broad enough to offer as much trademark protection as possible.  On the other hand, the description should not be so broad that it impairs the trademark applicant’s ability to distinguish its goods and services from that of another.  Case in point, the recent Trademark Trial and Appeal Board (TTAB) decision, as discussed here, held that the trademark application for the design plus words mark “17” as it pertained to various clothing items, including shirts related to the field of professional automobile racing, created a likelihood of confusion with the registered mark “SEVENTEEN” as it pertained to shirts.  The TTAB did not find the trademark applicant’s arguments regarding the difference between the kinds of consumers who would purchase the different shirts to be relevant.  Instead, the TTAB noted that “[e]xtrinsic evidence that may tend to limit the scope of registrant’s goods is essentially a collateral attack on the cited registration, which is not appropriate . . ..”

Purchasing a Keyword that is the Trademark of Another for Online Advertisements Held to be Use in Commerce and Trademark Infringement

While the law surrounding a third party’s use of a trademark owner’s trademark as a keyword so as to trigger an online advertisements is still in flux, a recent United States District Court decision illustrates that the mere purchase of the trademark as a keyword is actionable trademark infringement.  While the defendant attempted to argue that Plaintiff’s trademark infringement claim must fail because it simply purchased a keyword rather than displaying the Plaintiff’s trademark in the text of the online advertisement, the court disagreed and held that the Plaintiff had established all necessary elements for trademark infringement.  In particular, the court held that the mere purchase of the keyword satisfies the “use in commerce” requirement for trademark infringement.  While the question of whether the mere purchase of a keyword satisfies the use in commerce requirement is hotly debated currently, it appears that courts are willing to find that a third party does not have to use another’s trademark in the actual text of the online advertisement to be held liable.