FAQ – Trademarks INTL

PROTECTING MY TRADEMARK IN OTHER COUNTRIES

Will my U.S. trademark registration protect my trademark abroad?

Generally, no. Outside of the U.S. and its territories, a U.S. trademark has no legal force. A U.S. trademark registration can provide certain advantages in obtaining a foreign registration, such as relation back to the date of U.S. application or the issuance of a registration without having to show use in the particular country.

How much does it cost to obtain a trademark registration in other countries?

The cost to register a trademark in another country varies depending on the country. This is true even when seeking registration under a treaty such as the Madrid Protocol. In some countries, such as those in Central America, a registration can be obtained for a few hundred dollars (U.S.). For other parts of Latin America, the Middle East and Europe, the costs can reach the two thousand dollar range.

How long does it take to obtain a trademark registration in a foreign country?

The amount of time will depend upon the particular country, and the length of time can vary even from year to year.

What are the steps in the application process?

This depends on whether you chose to apply through the use of local counsel or through a treaty such as the Madrid Protocol. If you apply through local counsel, local counsel will conduct a search, file the application and report on its registration or on any office action. If you file through the Madrid Protocol, you ask for foreign country registration when you file in the U.S. and receive results by return mail from the Patent and Trademark Office.

Do I have to wait until my trademark is registered to use it in the commerce of the foreign country?

No. However, you need to be careful to secure your rights in “first to register” countries. If you begin using the trademark before obtaining a registration, a prior registrant will have superior rights to you and will be able to block your use.

Can I file a single application for the rest of the world?

No. The Madrid Protocol tries to provide a common network for obtaining registrations in a large number of other countries. However, under the protocol, separate designations have to be made for each country and a separate fee has to be paid. The Protocol provides no method for searches in anticipation of application which may create problematic situations by alerting others to the applicant’s intent before determining that it is available in the market. The only other multinational application is the Community Trademark which provides a single mechanism for obtaining registration in 25 European countries.

What is the difference between “first to use” and “first to register” countries?

Most of the countries in the world fall into these two categories, and, of those, most fall into the “first to register” category. The “first to use” countries tend to be those with a background in the British legal tradition. Generally, in a “first to use” country, the person or entity which first uses a trademark in commerce has superior rights to one who later registers the mark. In a “first to register” country, a person or entity only gains legal rights to a trademark by filing an application to register and by obtaining the registration. Searches are therefore far more important in “first to use” jurisdictions since a prior user could later challenge and invalidate a later-obtained registration. Filing a timely application to register before entering the marketplace is more important in a “first to register” jurisdiction since a registrant could shut down the use of a trademark by a prior unregistered user.

Can I obtain a trademark registration without using the trademark in the foreign country?

In most countries you can. However, after a number of years without use, the mark may be deemed abandoned. A very small number of countries, such as El Salvador, have no abandonment procedure and will allow you to hold a registration without use in perpetuity.

Can I make use of a trademark in a foreign country through a distributor?

Yes. However, many countries require that you file a copy of your license agreement allowing the distributor to use the mark with the government in order to have the actions of the distributor inure to your benefit. In drafting your distribution agreement, it is always advisable to draft the grant of territorial authority as a separate addendum in order to file that portion without rendering the financial terms of the distribution agreement public.

Can I ship goods which I have purchased which bear someone else’s trademarks into another country?

If you are an authorized reseller, this is generally not a problem. If you are not, these shipments would be considered parallel market shipments, and the right to import would vary from country to country. In some countries, such as the U.S., such imports are generally legal. In others, such as Mexico, they are prohibited. Yet, in others, such as Colombia or Peru, they are generally legal except in cases involving substances which are digested or which come in contact with the skin in which case a “registro sanitario” (sanitary registration) is required in the name of the trademark owner.

If a mark is registered by someone in one country but not in another country, can I register it the other country?

Generally yes, except in cases where the registered mark is famous or well known in the country were you intend to seek registration.

What is the Madrid Protocol and should I use it?

The Madrid Protocol is an international treaty to which the U.S. is a party which seeks to provide a streamlined multi-national mechanism for obtaining trademark registrations in the various signatory countries. From the perspective of a U.S. applicant, the Madrid Protocol suffers from three serious flaws. First, the application is based upon the U.S. application which, due to the nature of U.S. requirements, is often far narrower in the scope of protection than is available in other countries. By using the Madrid system the U.S. applicant is forced to accept the same narrow scope of protection in other countries. Second, the Madrid system is lacking in the insight and instinct afforded the applicant by the use of a local attorney. A relationship with a trained local counselor who conducts a search and prosecutes the application can often avoid problems which would not be foreseen in a Madrid filing. Third, if anything happens to invalidate the U.S. application, all foreign applications filed using the Madrid Protocol will also fail.

What is the European Community Mark?

The European Community Mark is a trademark registration process which allows applicants with a single application to obtain protection in 25 European countries. There are two significant advantages to the Community Mark. First, although more expensive than a typical national application, it is far less expensive than obtaining a registration in all or even a portion of the countries included in the process. Second, with national applications, use must be established in each country in order to avoid abandonment. With a community registration, use in one country satisfies the use requirement for all 25 countries.