According to the World Intellectual Property Organization, worldwide trademark registering activity increased to 14.3 million in 2019. Activity for industrial design rose to 1.3 million.
As more and more companies are trying to grow their operations overseas, itโs key you know the details regarding registering a trademark in countries outside of the US. Whether youโre trying to set up a business at home, open a brick-and-mortar store in the European Union or want to manufacture products in China, these next five steps will make sure you understand how to secure your trademark wherever your business is.
1) Registering Your Trademark in the US
When your business headquarters are in the US, your first step is to file your trademark application. You should do this at the USPTO. Anyway, it is often easier to acquire a US filing. Once you get it, your US filing date will be your priority date in all other nations that you apply during the next six months of the US filing date.
Once you decide which mark to use, your next step is to start the registration process with the USPTO. To achieve this, you should first complete a comprehensive trademark search. This is to spot if there are any similar trademarks.
While you can go with a DIY approach when searching for similar trademarks, this may not be the best path. Yes, youโll save money. However, itโs likely that you wonโt be able to do a complete search. This will lead to possible, unknowing infringes in the future.
It may be better to hire an experienced trademark lawyer. Moreover, besides them doing a comprehensive search for similar trademarks, your lawyer can help you decide which multinational classes you should include in your application. This is a crucial part if youโre planning to register your trademark in multiple nations. Why? Because some nations have filing methods that wonโt give you a broader scope of international classes.
2) Find Out if You Need to Secure Your Trademark in Other Countries
If youโre looking to have international trademark protection, this may look daunting at first. To start, take a look at where youโre running your operations now. Also, where youโll do in the future. For instance, if you work with offshore manufacturers or distributors, youโll begin the process there. When planning future endeavors, start by researching customer data to determine:
- Locations of your current clients
- Locations of your future target markets
As you collect the locations of your current market, also examine your goals for the future. For example, if you plan to expand in the United Arab Emirates, you would read about how to register a trademark in UAE. If you plan to expand in South Americaโฆ. You get the meaning. In essence, any nation that may be worth expanding in the future should represent a powerful candidate for registering a trademark.
The objective of this phase is to develop a comprehensive list of nations where you would like to register now and in the future. Once you get such a list you should explore how much youโll need to pay to secure your trademark in all those countries. Of course, you can split the list if you have to, in order to work within your budget.
3) Registering International Trademarks
Besides registering your trademark in specific countries, you can register it in the international trademark registration system. Its name is the Madrid system or the Madrid protocol. WIPO, or โ The World Intellectual Property Organization โ from Geneva, Switzerland, administers it.
The Madrid protocol enables you to secure your trademark in multiple nations as with it, youโre able to file an application directly with your own member nation. Fortunately, US is the one of the member nations of the Madrid protocol. When you receive an international mark that you registered in the US, you basically get an equivalent to applying or registering the same trademark in nations youโve designated.
The Madrid protocol will also simplify the management of your trademarks. This is because you can directly record any change or renewal of your registration without having to change accordingly in each member nation. Not to mention that you may acquire additional nation member registration from other countries following the Madrid system.
4) Actively Work on Protecting Your Trademark
Whether youโve only registered your trademark in the US, or internationally, youโll likely need help from an intellectual property lawyer. They can ensure you have all the essential details and a smooth path for trademark registration. Registration isnโt a one-time protection act. Youโll need to actively search if anyone is violating yours. As well as utilize any legal means necessary to deter them.
Yes, youโve registered your trademark. However, that doesnโt mean youโll be able to sit back and relax without worrying if anyone is copying it. A trademark registration only provides you with the right to sue someone for violating your intellectual property mark. Yet, it wonโt defend your mark against people whoโre stealing it.
All of this means you need to directly handle the defense of your trademark. As well as any other online assets like site or application. When you let other people utilize your trademark, youโll basically give up ownership. In other words, you should watch out for anyone else who might try to use your trademark. Even acquire help from a lawyer to send cease and desist documents.
