Updated: Feb 4
Savvy business owners invest substantial time, effort and money in establishing a strong brand. They ensure that they get protection for their brand by trademarking it. Now that most businesses have an online presence and have the ability to sell across state and national borders, it's highly important to ensure that you’re not encroaching on someone else’s rights in a foreign country. A United States trademark registration is only valid and enforceable in the United States. If you want to enforce your rights in a foreign country, you will need a trademark registration in that foreign country.
Online platforms like Amazon, ebay, and Etsy have opened up the consumer market for businesses. Businesses that were previously selling locally now have the ability to cater to a larger market, not only nationally but internationally. Of course, selling in a global marketplace is often accompanied with risks and issues. One of those issues relates to trademarks. If you haven’t already registered your brand in the United States, then you should do it immediately or you’re leaving your brand vulnerable to misappropriation by companies who are in the business of registering random brand names and selling them to businesses who actually use the name but failed to register it. Such companies demand money from businesses in exchange for the brand to businesses that actually use them. Trademark rights are territorial. A trademark registration protects the brand in the country of registration. The protections provided by a United States trademark registration are only good in the United States and not in any other country. This means that if someone in the United States copies your brand name or has a similar brand name, you can enforce your rights against them in the United States. If someone outside the United States has a similar name, then you cannot enforce your rights against them unless you have a trademark registration in that country.
So what can you do if you have a US trademark registration, you sell on Amazon targeting primarily US customers but your product listing shows up on Amazon.uk.? You have no control how and where your product listing shows up on a Google search or on Amazon and a person in Europe purchases your product. Once a purchase is made then you’re selling internationally and you could end up infringing on a registered trademark in that country. If you’re seeing a good number of sales in other countries, then you should consider filing your trademark internationally. The US is a good platform to file internationally. International trademark application is possible under the Madrid Protocol which is an international treaty and most countries are members of that treaty. This system allows you to have a trademark registration in several countries by filing an application directly with the trademark office of your home country and that’s the USPTO for businesses based in the US. Of course, you will need to first have a trademark registration in the US to be able to apply for an international trademark.
If you do business or sell primarily to customers in the EU you can designate EU in the application and it will grant protection of your trademark in all EU countries. The advantage of filing under this international system over individual filing in each EU country is that the cost of filing is significantly reduced and it grants protection for an initial 10 year period with a single renewal date. Filing under this system doesn’t make sense if you’re only selling in 1 or 2 foreign countries. It may then be more cost effective to file individually in those countries.
If you are a small business that’s growing and selling products globally, then you should consider filing internationally. Make sure you have a trusted and experienced trademark attorney on your side who you can consult with and who will help you plan a strategic trademark portfolio. Once your trademark is registered, it doesn’t mean that all your work is done. Trademark rights get stronger as you enforce them. If you find someone copying your brand or using a name that’s similar to your brand, you should send a cease and desist letter and stop infringers from using the name.
At Nupur Shah Law, we help with trademark applications and prosecution. We help with reviewing your work and determining the best possible protection available to you. Call us at 646-820- 1366 or email us at firstname.lastname@example.org. I am happy to have a complimentary conversation with you on how to secure your rights.
Working with an attorney to secure your business can help avoid trouble later on. Nupur Shah Law can help you if you have questions about your business.