Global Brand Protection – A 50,000 Foot View


So you’ve protected your trademark in the USA – nice work!  But you have longer-term aspirations to take your business abroad.  What are some things you should be thinking about now, or actions you should be taking?

First, think about your long term brand goals.  Once your goals are clear, take steps to understand the costs of global protection, and make efficient tradeoffs between those costs and maximizing protection.

Where to protect?  First, searches and/or new applications should be considered in all jurisdictions in which you currently sell goods or offer services.  But it’s likely you have those well in hand by now.  Less obvious are the jurisdictions in which you might commence sales or offer services in the near future – and by “near future,” a good rule of thumb to use is “within the next 3-5 years.”  (That’s the time in which most registrations become vulnerable to cancellation on non-use grounds).  Once you have that list of countries assembled, you might strike any in which business isn’t expected to be very significant  — meaning, where it’s not yet worth the expense of protecting your brand there.  (On the other hand, there are a handful of countries in which trademark registration is required to do any business at all; if any of those countries end up on your list, they should stay put.)

When to protect?  There’s a trick to this one that you might not already know.  If you filed your US trademark application within the past 6 months, you can apply to register that same mark (for the same goods/services) in many foreign countries and still achieve the earlier “priority filing date” associated with the US application.  This is a big advantage, since it allows you to bypass (in most cases) any applications filed for similar marks within the past 6 months that would otherwise have blocked your application.  If you miss the 6-month window, you can always apply later – but without the benefit of the US filing date.

How to protect?  Relying on local counsel to file national applications in each foreign jurisdiction is always an option.  Less well known is filing under the “Madrid Protocol,” which allows an applicant to file a single application (based on a home country application or registration) simultaneously designating numerous foreign jurisdictions.  The advantage of the “Madrid” approach is its simplicity and cost-efficiency.  There are downsides, however – most significantly, the resulting registration is vulnerable to “central attack,” meaning if the home country registration is cancelled for any reason within 5 years of registration, so too are the corresponding foreign registrations (unless they are “transformed” into national registrations, which is a complicated and expensive process).  After your mark is registered, make sure to keep an accurate calendar of any post-registration maintenance deadlines (since some local counsel may not send reminders), record any name or address changes with the appropriate trademark offices as soon as they occur, and expand the geographic scope of your trademark watching service accordingly.

What mark to protect?  Your US registration is probably for an English word – am I right?  If you’re looking at protecting that word or phrase abroad, however, you may have to think bigger.  If English isn’t the primary language of the country in which you’re applying, you may also need to protect the word or phrase’s foreign translation – a registration for an English word won’t necessarily protect the non-English translation.  Likewise, if you’re applying in a country with a non-English alphabet, you might consider applying to register the equivalent of the mark in the local language.  For example, in China, you might consider applying to register the combination of Chinese characters that corresponds most closely to the way your English-language trademark is pronounced (but check with native Chinese speakers before you commit!).

What goods/services to protect?  Unless your US registration is based on a foreign registration, you’ll have to prove use of your mark in the US in connection with all the goods/services listed before a US registration certificate issues.  This is not the case in many foreign countries, which issue registration certificates absent a showing of use.  This bears some additional consideration – e.g. since there may be no use requirement for foreign registration, do you want to include a broader listing of goods and services in your applications abroad?  This could provide you with some “defensive” protection against third parties, especially in countries that generally consider only same-class goods or services to be conflicting.  On the flip side, you may incur additional filing fees for a longer list of goods/services, and applying more broadly than necessary could increase the risk of conflicts with third-party marks (a good reason to make sure your pre-filing search covers the entire list of goods/services for which you intend to apply!).

The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.


About the Author: Tore T. DeBella

Tore Thomas DeBella is an associate in the firm's Intellectual Property Practice Group. Tore’s practice focuses on trademark clearance, portfolio management and enforcement, as well as information technology and data privacy/security strategy and compliance. Tore’s unique blended practice offers significant value to his clients, as he is able to counsel on both the “brand value” and “data” implications of various cutting-edge technological issues like social media, website policies and terms, keyword advertising and domain names.