Almost every single day we receive inquiries from clients and prospective clients alike asking where they should pursue international trademark registration. Typically, the trademark applicant has successfully registered in the United States with the United States Patent and Trademark Office and hopes to expand their trademark protection beyond the United States. While it is also possible that the entity has yet to secure any trademark registrations and is trying to identify where protection should be sought, the process for determining where to seek international trademark registration is typically the same.
First, the entity should identify its most critical business markets by geographic location. For example, if one is to sell products in the United States, Canada and the United Kingdom, a trademark attorney would recommend that they pursue international trademark registration in those three countries. Alternatively, an entity may determine that they are currently doing business in certain geographic locations but have hopes of expanding to other geographic locations. In those instances, it is important to identify a list of all geographic locations so that the next step may be completed.
The next step will allow a trademark attorney to identify whether the particular geographic location is a first to file or first to use country. A first to file country provides trademark rights to the first entity to file for and successfully register a trademark in that country. Whereas a first to use country, such as the United States, provides trademark rights to the first entity to make an actual use in interstate commerce. Understanding which countries follow which of these two rules is critically important in determining the next step in trademark registration.
Once the first two steps are completed, the trademark attorney can determine whether or not there may be ways to expedite the international trademark registrations. For example, if there are several European countries in which the entity is seeking protection, a community trademark may be a good solution. Moreover, if the applicant is already successfully registered in the United States with the United States Patent and Trademark Office, utilizing the Madrid protocol, the trademark attorney may recommend that various countries be applied for through the United States Patent and Trademark Office itself. Regardless, this step of the process is where total costs, which include filing fees, as well as the attorneys fees can be determined so that the entities seeking international trademark registration can budget accordingly.
Ultimately, understanding which trademarks you own, knowing where you currently do business by geographic location, understanding where you hope to do future business by geographic location, and setting an appropriate budget for international trademark registration will make the process proceed more efficiently. Utilizing a trademark attorney who has experience with international trademark registrations can only help.