Where Should I Pursue International Trademark Registration?

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.