If you are doing business outside the US, you should consider trademark registration in foreign countries.
Trademark rights are territorial, you have the exclusive right to use a particular trademark in the geographic location in which you use it and/or in which you file an application to protect it in. If you’re the owner of a trademark registration with the USPTO, it doesn’t mean that you have the exclusive right to use it in Canada or Mexico or anywhere in Europe. While you might have common law trademark rights in those different countries, the application and registration doesn’t give you exclusive rights. Attorney Brian Hall discusses the importance of international registration of trademarks on today's TLR.
Announcer: Welcome to Trademark Law Radio sponsored by Traverse Trademark Law, internet lawyers specializing in Trademark Infringement, Trademark Licensing, and Trademark Registration. Now here’s your host, Damien Allen.
Damien Allen: Today we are discussing the options available for trademark owners. People ask, can you file one trademark application and be protected everywhere, Brian? Is that something that is universal?
Brian A. Hall: The short answer is no, Damien. And people do ask that all the time, whether it’s filing a USPTO or United States Patent and Trademark Office trademark or Canadian application or Mexican or whatever it might be, you can’t file a trademark application and be protected everywhere. Trademark rights are territorial, meaning that you have the exclusive right to use a particular trademark in the geographic location in which you use it and/or in which you file an application to protect it in. So, just because, let’s say you’re the owner of a trademark registration with the USPTO, it doesn’t mean that you have the exclusive right to use it in Canada or Mexico or anywhere in Europe, for example. While you might have common law trademark rights in those different countries, the application and the subsequent trademark registration itself doesn’t give you those rights.
Damien Allen: Now, if I own a trademark under the USPTO but I want greater protection, what should I do?
Brian A. Hall: Well, you have a few options and I think that the best step for clients, and I advise them of this pretty regularly, is to determine, number one, where are you currently doing business. So, if you’re simply doing business in the United States, then a USPTO trademark registration should suffice. But the reality is in this day and age with the internet and e-commerce sites and whatever it might be; people are usually doing business outside of where they’re located. So, what I say is, we first need to identify where you’re currently doing business, where you intend to eventually do business, and then identify what those available options are for trademark registration to provide the greatest protection. So, if you’re covered within the USPTO, The United States Patent and Trademark Office, you can still go out and determine whether or not you need those trademark registrations in, for example, Canada, or if you’re doing business in China or wherever it might be.
Damien Allen: When a trademark owner refers to an international trademark registration, are they talking about trademark registration using the Madrid Protocol?
Brian A. Hall: That’s a really good question because international trademark registration is really what it says. It means that you’ve gone out and you’ve registered a trademark somewhere outside the United States or wherever you’re located. But international trademark registration really refers to two things. The first is, and as you’ve mentioned, the Madrid Protocol, and what the Madrid Protocol is, is it’s essentially a piece of legislation that allows someone to file in other countries once they have a United States Patent and Trademark Office application and/or registration. So, you can use your USPTO registration through the Madrid Protocol to register in different countries. So, that’s one type of international trademark registration. The other type of international trademark registration that people are probably most familiar with is what’s known as a community trademark. And what a community trademark is is a trademark that offers essentially a unified system of protection to trademark owners throughout the European Union. And what the European Union today encompasses countries like Austria, the Czech Republic, Finland, Germany, France, Greece, Italy, countries along those lines that are protected and part of that European Union. So, it offers the ability for one application to provide protection in all of those areas. So, while the Madrid Protocol allows you to essentially use that as the vehicle to select different countries through your USPTO trademark, the community trademark is an entirely different beast that allows you to file through a different office than the USPTO – it’s actually the office OHIM – and you file through there and you get protection in all of the EU countries.
Damien Allen: What are some of the differences between an international trademark registration under the Madrid Protocol and having a community trademark?
Brian A. Hall: One of the main differences is really where you can get protection. So, as I said before, under a CTM or community trademark, you have protection in the EU countries. So, there are multiple countries that fall under that, like I mentioned some before, Germany, Greece, and Italy, whatever it might be. Whereas under the Madrid Protocol, there’s many more countries besides the EU, although the European community itself is one of the options that you can select to get protection in through your international registration, but there’s many other countries that aren’t part of the EU. Such as, South Korea, or Uzbekistan, or Vietnam or some other countries that really gives you the option to go and use your USPTO application as a basis to go get protection in those countries. The other thing to keep in mind and one of the large differences is that a registration using the community trademark, or CTM, creates one right throughout the entire European Union. While that’s great, if you are refused registration in a particular country, then your entire CTM application fails. That’s not the case under the Madrid Protocol. When you file an international application using the Madrid Protocol, an application can be refused registration by one particular country under their own national laws but you can still, if you designated multiple countries, get a successful registration in those countries. So, that’s really something to focus on because you can select which countries you want to file in under the Madrid Protocol and you can mitigate some of the risk of getting your application denied in total by going the Madrid Protocol route. The other main difference I would say is that besides the applications being managed by different organizations, so, for example, a community trademark is managed through OHIM, which I mentioned before which stands for the Office For Harmonization in the Internal Market, the Madrid Protocol is managed through the World Intellectual Property Organization or WIPO. And WIPO maintains an international register of marks and essentially administers the Madrid Protocol system. That being said, as I mentioned before, the USPTO is really a place that you can use the Madrid Protocol to file your application in these different designated countries. So, there are multiple differences that do exist and it’s hard to tell a prospective client at the outset which one is best for them. You need to really understand, going back to what I said initially, where they’re doing business and where they want to do business, and then determine whether a community trademark or an international trademark application using the Madrid Protocol is best for them.
Damien Allen: What are some of the reasons that a registration application will be denied or would fail under the community trademark?
Brian A. Hall: That’s a great question and really the reasons that it could fail under the community trademark are no different than the reasons it could fail under a USPTO trademark or even an international registration. The most common are that someone else has already applied for and/or is using your trademark or something that’s going to create a likelihood of confusion with your trademark. So, if you’re not the prior user of that mark in a particular country, then there is a good reason that it can fail. Another reason that it can fail - and this happens quite often with applicants who do not consult with trademark attorneys or other legal counsel - is that the application itself is incorrect. There are errors in it or there are omissions that lead an examining attorney in whatever organization it might be to say that the application cannot proceed until those errors are corrected. So, it’s really, there are two fronts that lead to potential risk for a trademark applicant, administrative type errors and substantive type errors.
Damien Allen: And how would a trademark owner know which international trademark registration is best for them?
Brian A. Hall: At the end of the day, they need to look at the countries, number one. Based upon which countries they choose, there’s a filing fee associated with each country, so, for example, under the community trademark, one filing fee covers all of the 27 countries, and I believe it’s 27 right now that are part of the European Union, whereas, under the Madrid Protocol, the fees for an application filed are really dependent upon the number of countries selected by the applicant. So, cost becomes definitely a factor that trademark applicants and trademark owners who seek greater protection should consider. Ultimately, I’d say that the process is also something they need to consider because the CTM process can sometimes take longer, for example, using the Madrid Protocol to file in, let’s say, South Korea. The likelihood of getting through in one country, obviously, is greater than getting through 27 different countries as part of the community trademark. So, timing, cost, and really where you want to seek that protection are all factors that need to be considered and that’s really where a trademark attorney comes into play and offers so much value because most trademark owners may be familiar with their national laws, so, for example, U.S. clients may understand what the USPTO does and the types of protections that a United States and Patent and Trademark Office trademark provides to them. They may even understand the process a little bit, but when you get into these foreign countries, there’s sometimes a need to get foreign counsel understand their national laws. There’s sometimes a need to look at the process in those countries alone because if there’s no need to file an international registration, for example, if you only need protection in one country. Granted, you can use the Madrid Protocol to get that protection and simply designate that one country and then if you expand down the line, you can designate more, but a lot of times, there’s definite value in speaking with local counsel in whatever country it might be to determine whether or not your trademark, number one, will be likely to register. And number two, whether or not you could create trademark infringement issues, for example, for yourself by registering in those countries. So, at the end of the day, it’s really best to speak with a trademark attorney who has experience in international trademark applications, international trademark registrations and really know the process that goes along there with.
Damien Allen: Well, thank you very much for joining us today, Brian.
Brian A. Hall: Thanks a lot, Damien.
Damien Allen: We’ve been discussing international trademark registration with Brian A. Hall of Traverse Legal, PLC and you’ve been listening to Trademark Law Radio. My name is Damien Allen. Everybody have a great afternoon.
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