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International Trademark Registration
INTERNATIONAL TRADEMARK EXPERT ATTORNEYS
LOCAL EXPERTISE FOR GLOBAL BUSINESS
Do you need an International Trademark Registration?
INTERNATIONAL TRADEMARKS BELONG TO THE FIRST TO REGISTER
Have one “or more”?
Frequently Asked Questions
GET ANSWERS TO THE MOST COMMON QUESTIONS
Do your stakeholders include one or more of the following?
- Foreign distributors
- International licensees
- Sales to foreign clients
- Overseas manufacturers
- Risk of Counterfeit goods
There are various treaties that can simplify the process of obtaining an international trademark registration. The Madrid Protocol allows you file a trademark international registration through the U.S. Trademark Office. There are disadvantages to filing from the U.S. Trademark Office using the Madrid Protocol. While the Madrid Protocol may seem the easiest, it can often be more costly than a direct filing. Read: Madrid Protocol Trademark: Registration Traps. People often ask How to Register a Name in Canada. For international trademark in all countries, we compare filing methods and find that a direct fling is often cheaper and faster especially if only seeking protection for one or two countries. We will decide if Madrid Protocol or a direct filing is best for your business. Understand the treaty basics and review these international registration case studies.
An EU Trademark is a European Union Trademark. There are now 26 counties in the European Union (now that UK has left due to Brexit). The EU Trademark system offers one centralized filing for a trademark registration for all member countries (subject to the mark being available in all member countries). This means you are protected for future expansion in 26 countries for less than double the cost of filing for one country!
As discussed earlier, with an EU Trademark, you can secure protection in 26 countries for one flat fee, in one filing. Most important, when you file for an EU Trademark, we are able to provide your online business and products with a wider scope of protection. For U.S. applicants, a Madrid Protocol application is limited to the goods and services registered in the U.S. There is no such limit when filing directly for an EU Trademark. Because there is no requirement that you prove use to obtain the registration, you can claim a broader range of goods and services to pre-empt later users from getting to close to your protected goods and services.
International Trademark searches begin with a review of the EUIPO and the WIPO databases. The databases are a great starting point for countries in the European Union. However, the information for filings in Asian and Latin American countries is limited and will require a local search in the countries where you intend to file for an International Trademark.
Each country sets its own government filing fees. Trademark filing fees also vary based upon the number of International Classes for which you file. There is typically a filing fee for each class. Each foreign firm also sets its own fee schedule. For these reasons, we can’t quote an exact fee until we schedule a planning session. Once we know your needs, we can then give you an accurate estimate of costs and fees, and help you create a strategy and budget that works for you. Click the link below to schedule your planning session today.
Our firm assists foreign (non-U.S. applicants) who file using the Madrid Protocol and designated the U.S. in their International Application. If you receive a U.S. Trademark Office Action, you are required to engage a qualified U.S. trademark attorney to respond to the Office Action. Learn more about registering your trademark in the U.S. Read: Foreign Brand Owner's Guide to U.S. Trademark Registration.
Many of these Office Actions are fairly simple in the required response, particularly those dealing with differences in the descriptions of goods and services. Where there is a refusal to register based upon a prior pending application or existing registration, more in-depth review and analysis is required.
Have a U.S. Trademark Office Action with a refusal of your Madrid Protocol application? Contact us to schedule a review of your Office Action.
INTERNATIONAL TRADEMARKS MADE EASY
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