Is your brand expanding outside the U.S.? Do you need an international trademark registration? The process can confusing to say the least. Here are some basics you need to know.
An international trademark registration goes to the first to file.
Trademark rights in most of the rest of the world are secured by the first to register, not the first to use a trademark. In the US a prior unregistered user can potentially obtain superior rights to the first to register at least in markets where the mark was used prior to filing. Not so overseas. If you are likely to expand overseas, it’s important to plan ahead and secure filings in important territories early on.
Don’t be held a hostage to fortune the way Pinterest has found itself. Pinterest recently lost the right to register and use Pinterest in all of Europe because it waited two years to file a trademark.
Pinterest launched in 2010 but did not even file its U.S. trademark application until 2012. In the meanwhile a British start up called Premium Interest filed first and was held to have prior rights. Pinterest’s efforts to prove it had territorial rights was rejected. Pinterest Loses European Trademark
“By setting up and using their site in the US, starting to promote it elsewhere, and delaying for whatever reason their own trademark applications, Pinterest were always a hostage to fortune.”Christopher PettConsultant at Dehns,
Ways to secure an international trademark registration
There is more than one way to obtain an international trademark registration so the details get complicated.
1. File from the U.S. Trademark Office
If you have a valid U.S. trademark registration you file in many countries around the world directly from the Trademark Office using the Madrid Protocol. While we use this there are several pitfalls and it is often not a good idea. Here’s why:
2. File Through a trademark law firm
My firm has invested many years meeting and hiring firms in many countries around the world. Our foreign associates are highly skilled experts in the laws of their countries and provide our U.S. clients with excellent services. Here’s why we count on them: