Don’t Forget International Trademark Registration

International trademark registration doesn’t exist, at least in a simple and unified form. Trademark registration is territorial in essence, meaning that trademark protections are only good in the country (or sometimes group of countries) in which they are registered. You have to file an independent trademark application in every country where you want to register it, except for special situations like the European Community Mark, which has cross-border effectiveness within the EU.

If you want to extend your business and market presence abroad, you should think seriously about registration of your trademark in the countries where you will sell your goods and services. Most companies understand the importance of such registration too late. They get the point of considering registration only when counterfeiters appear or when they are accused of infringing the intellectual property rights of others.

By registering your mark abroad, you also will have the possibility of licensing the trademark to others and making money from your trademark rights, as well as from your primary goods and services.

Despite of the fact that trademark registration is regional, we can register your mark in 95 countries at the same time using the “International Application under the Madrid Protocol.” This is somewhat akin to the Patent Cooperation Treaty (PCT) for patents, allowing applicants to claim time and date priority to previous U.S. registrations. In order to claim this priority under the Madrid Protocol, it is necessary to file within six months of receiving the U.S. registration, although late registration without claim of priority may be made.

You can see the members of this protocol accessing this link:

http://www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf

After filing such an application, each member state examines the possibility of registering your trademark. The fees for registration depend on the number of classes of goods and services chosen and the number of countries you want your mark to be registered in. There are many advantages in using the Madrid Protocol, especially the fact that such registration will be considerably cheaper than a separate application in each of the 95 member states.

In conclusion, remember that a U.S. trademark registration offers legal protection of your brand only within the territorial limits of the U.S.A. Once you start to sell your goods and services abroad you have to think about your trademark protection in non-U.S. territories. Your brand is a valuable asset that can make a lot of money for you. Your duty is to protect and take good legal care of it.

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