October 28th, 2024

Have You Considered Expanding Your Trademark Protection Internationally?

Hello Reader,

I hope this email finds you well!
As your business continues to grow and expand beyond U.S. borders, it's essential to think about protecting your brand internationally. Securing a trademark in the United States provides valuable protection, but it doesn't extend to other countries where you may do business, sell products, or have plans to grow.

Here's where international trademark registration comes in. If you're expanding into international markets or even considering it, registering your trademark globally can safeguard your brand and intellectual property across multiple regions. This process helps prevent others from using your name or logo in countries where you're not yet operating but may enter in the future.

There are two main options for international trademark registration:

Direct National Filings – You can file directly with each country's trademark office. This option is often best if you're targeting a specific country or two.
Madrid Protocol – If you're looking for broader international coverage, the Madrid Protocol allows you to file a single application to register your trademark in over 100 member countries. It's a more streamlined process, but there are still important considerations when choosing this path.

I would be happy to discuss your business's goals and determine the best strategy for securing your trademarks worldwide. It's always better to be proactive and protect your brand before any issues arise in international markets.

Let me know if you have any questions or would like to set up a time to chat about this further!

Keep Your Brand Safe and Protected,
J.J. Lee and the Trademark Lawyer Law Firm Team!

PS. Contact us to mark sure your business is protected!

Categories:

What are Trademark Application Suspensions?

Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.

What are Disclaimers for Trademarks?

A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights. A good example of this is disclaiming “café” if your services are for a café.

What is the Supplemental Registry?

If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry. In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.

What is the Date of First Use?

Two dates must be specified in a trademark application: Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade. Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.

What is the Renewal Timeframe for a Trademark?

The renewal timeframe for a trademark is between the 9^th and 10^th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.