Trademarks distinguish the goods and services of one enterprise from those of other businesses. When registered properly, trademarks are protected by intellectual property laws. Trademark rights are private and protected through the law and in some cases, through court orders. Whether you are currently registered in the United States or have recently started the application process, you may benefit from knowing how to register a trademark internationally. At War IP Law, PLLC, our attorneys are well-versed in U.S. trademark laws and we have affiliations with attorneys in other countries to assist our clients in protecting their marks in countries other than the United States. We are prepared to help you understand what you need to do to protect your business. When you are ready, reach us at (202) 800-3754 to start a conversation and to learn more.
What Is a Trademark?
A trademark is usually a short phrase, logo or combination of words and logo that sets your company apart from others. Business owners in the United States must register their trademark in order to have the security of knowing they have full protection under the law. Failing to do so can leave the brand vulnerable to appropriation or intellectual property theft by other businesses or individuals.
In terms of what can be trademarked, words, a combination of letters, letters, and numerals typically make up a trademark. However, trademarks may also be drawings, symbols, three-dimensional features, sounds, non-visible signs, or color specific. In reality, the possibilities of what can be trademarked are almost limitless. Registering a trademark in the United States is done through the United States Patent and Trademark Office (USPTO). If you are looking to sell goods outside of the United States, it is crucial to understand the international registration process.
Why Register a Trademark Internationally?
International trademark registration is not required by law. If all of your customers are located in the United States, registering internationally may not be worth your time or investment. However, international registration is a good idea if you sell only online and your trademarked products or services are viewable or available in other countries.
Trademark registration provides an exclusive right to the use of the registered trademark in the country the trademark is registered in. As such, the trademark can only be used by its owner or licensed to another party for use in return for payment. Registration provides legal clarity and reinforces the position of the trademark holder in the event of litigation. If you have questions or concerns regarding your international trademarks, War IP Law, PLLC is ready to help.
International Trademark Application Eligibility
Business owners looking to submit an internal trademark application through the USPTO need to meet specific requirements. To start, the trademark needs to be registered with the USPTO, or the business owner needs to have started an application for registration. The business owner must also be a national of the United States or have an industrial or commercial business located within the United States.
Applying for an International Trademark
The Madrid Protocol allows the owner of a trademark to register in any country by filling out a one trademark application, referred to as an international application. More than 80 countries are members of the Madrid Protocol, including the United States.
The international application does not guarantee a country will agree to register an applicant’s trademark. However, it does simplify applying for foreign trademarks. It is important to note that every country has its own laws for the types of trademarks that are allowed to be registered. No trademark is universally enforceable everywhere, even if it is recognized internationally.
Requirements involve the following:
- You must have a basic registration in the United States or have filed a trademark application in the system.
- The international application needs to list the same mark and owner as the initial application or registration.
- The international application’s list of products or services needs to be the same as the list on the initial application or registration.
- You must pay certification fees upon submitting an international application.
- You must note at least one country where you wish to expand your trademark protection.
The Review Process
Once a business owner has filed an international application online through the Trademark Electronic Application Services (TEAS) or through an online trademark service, the application is reviewed by three different agencies. Applying does not guarantee trademark protection. The review process includes the USPTO, International Bureau, and individual foreign countries.
- USPTO Review. The USPTO reviews international trademark applications and certifies the information on the international applications is the same as the information on the United States application. From there, applications are forwarded to the International Bureau of the World Intellectual Property Organization (WIPO).
- International Bureau Review. The International Bureau is responsible for determining if your international application falls in line with the Madrid Protocol. Assuming it does, your trademark will be published in the WIPO Gazette. You will also receive an international registration certificate. Note that registration is good for ten years. Depending on the situation, it may be renewed every ten years.
- Foreign Countries. Each foreign country you list in your international application will review it for extension and trademark protection. Countries generally use the same standards that apply to other trademark applications filed. Countries have 18 months to grant, deny, or extend trademark protection. If a country fails to deny protection within those 18 months, trademark protection is granted on an automatic basis.
Learn More About Registering a Trademark Internationally
Whether you plan only to register your trademark in the United States or you are considering registering your trademark internationally, you may benefit from consulting with an experienced intellectual property attorney. Our legal team can assist you with the groundwork for your trademark registration and walk you through the application process to ensure you understand what you need to do to have the best chance at approval. If you are struggling with how to register a trademark intentionally, a trademark lawyer can help answer your questions and help you understand all of your legal options. Contact the experienced intellectual property attorneys that understand how to register international trademarks at War IP Law, PLLC online or call (202) 800-3754 to learn more.