Ask the consultant: What's the most effective way to protect trademarks?

  • Updated: February 17, 2013 - 2:46 PM

Studio portrait of Susan Marsnik, Opus College of Business Associate Professor of Ethics and Business Law Department , taken February 8, 2011.

Question

When launching an international product, what is the most effective way to trademark and file for foreign trademark protection outside of the United States? How important is it to file foreign trademarks for international product marketing in Europe and possibly Asia? And once a U.S. trademark has been approved, what treaties are in place to make international trademarking easier to acquire?

Marina Mann, Chief executive, marina@eatsleepride.com

 

Answer

It is excellent that you are thinking about protecting your trademarks (which are attached to goods) and service marks (which are attached to services) in countries outside the United States. Your federal registration will only protect your marks within the United States.

If you wish to protect your marks in another country, you must follow that country’s rules and procedure to protect your rights. In most countries, this means registration with the trademark office. Thus, to protect your trademark in China, Japan and India, you will have to follow each country’s procedure for registration in its national trademark office under its national laws.

The European Union provides a notable exception to national registration. In the E.U., you may choose to register your mark in some or all of the 27 member countries through each country’s national trademark registration system.

You may also choose what is called the Community Trade Mark. A CTM provides trademark coverage for the entire E.U. with one registration. There can be advantages to a CTM, including having to file one application for a mark that will cover the entire E.U.

Because trademark law and practices differ from country to country, it is best to consult a law firm with international experience and connections in the countries in which you seek protection for advice.

 

Susan Marsnik, associate professor, Ethics and Business Law Department, University of St. Thomas Opus College of Business

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