Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

Where to File a Trademark Application for Registration

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

This is Brian Hall, a trademark attorney with Traverse Legal, PLC, a trademark law firm that represents trademark applicants throughout the world.  Today, I will be answering the question:  Where to file a trademark application for registration.  This is a common question I receive from prospective clients, and those that already have a trademark rights, but further want to protect them via a trademark registration. 

Internet Law Attorney Discusses International Trademark Registration | Trademark Protection

Welcome to Trademark Law Radio sponsored by Traverse Legal, an internet law firm specializing in intellectual property law with offices conveniently located in Traverse City, Michigan; Los Angeles, California; Austin, Texas; Lexington Park, Maryland and Encino, California.  In this episode, Trademark Attorney Brian A. Hall discusses the benefits of international trademark registration for trademark protection in foreign countries.

Play: Internet Law Attorney Discusses International Trademark Protection
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With: Brian Hall

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Attorney Brian A. Hall:  Owning a trademark registration with the United States Patent and Trademark Office is a great start, but in today’s global economy, it might not be enough.  Each trademark owner’s goal is to increase the protection of its trademark, as well as the underlying value associated with it.  Therefore, while a trademark registration with the USPTO provides protection in the United States, it might not provide the protection worldwide that’s necessary. 

International Trademark Registration For Companies Doing Business Outside the US

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.

EU Community Trademark Fees Drop 40% in May

Community trademark fees, fees for trademark and registration in the European Union, will drop 40% in May.  This will bring the cost of Community trademarks down to about €900, or approximately $786.00 USD.  The European Commission is currently working on a community trademark fee that merges the application fee and the registration fees into one payment.  Applications that are currently under consideration for which a request for payment has not been issued by the European Commission will pay the new, lower fee.

 

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).

Filing Under the Madrid Protocol Protects Trademark Rights Internationally

The Madrid Protocol, also known as the Madrid System for the International Registration of Marks, is an international trademark registration system administered by the World Intellectual Property Organization (WIPO) that allows a mark holder to register a trademark in multiple jurisdictions at the same time.  Filing a trademark under the Madrid Protocol can be difficult, as it differs significantly from a normal trademark filing with the United States Patent and Trademark Office.

International Trademarks: Understanding Your Trademark Rights Using the Community Trademark System in the European Union.

While any brand that is registered in the United States goes through the Patent and Trademark Office, if you plan on selling your product outside of this country, the process can be much more complex. This involves using local counsel in each country in which the product or service will be sold. This process can be expedited through the Community Trademark system for European markets, which is administered by the European Union.

If your company is interested in expanding its trademark protection outside of the US you should consult an attorney with a list of interested jurisdictions, which will allow counsel to provide you with estimated costs and formulate a strategy to accomplish the registrations.