A trademark is a word, symbol or phrase (or even a smell or sound) that is used to distinguish the source of goods and services on the market from every other brand out there. As opposed to copyright or patent rights which expire, trademarks can last in perpetuity if properly maintained. This provides enduring value to a brand. However, global trademark rights depend heavily on following the necessary filing requirements in each country. Failure to follow those requirements may even exclude a brand owner from major markets. Securing and defending trademark rights are imperative to establishing a brand footprint both domestically and abroad. This overview summarizes how trademark rights are created and the importance of actively engaging in their protection on a global scale.
U.S. Trademark Rights—A Hybrid System
In the United States, common law trademark rights—rights created without registering a trademark with the United States Patent and Trademark Office (USPTO)—are created by first use. The first person to use a trademark in commerce is granted common law rights in that mark in association the goods and services that the mark is used on. However, common law rights are limited to the geographic areas in which the trademark is used. This means that the trademark owner may not be able to stop another company from using the same mark in a different area of the country.
When multiple companies use the same or similar mark,the brand recognition of that mark is diluted and the buying power of that trademark decreased, and consumers are less likely to associate that particular word or symbol with a particular source. Moreover, limitations on common law rights may prevent a brand owner from expanding to the entire country, because they may be blocked by competing regional rights.
To ensure exclusivity, U.S. brand owners should register their trademarks with the USPTO as soon as commercially possible. Registration with the USPTO provides constructive notice of the brand owner’s exclusive rights to the trademark throughout the United States. There are two primary avenues of registration in the United States: (1) intent-to-use applications; and (2) actual use applications.
In the U.S., a brand owner may apply for a trademark if they have a bona fide intent to use a mark in commerce. That is, a genuine, good faith intent to make use of the mark. If a brand anticipates launching a new product in the near future, it may apply for a trademark on an intent-to-use basis. Provided it uses the mark in commerce within roughly three years, its priority of rights will date back to the filing date of the intent to use application, even though the mark is actually used on a later date.
Through the second method, an actual use application, a brand owner that is already using a trademark in commerce may secure trademark rights by providing the date of its first use in commerce to the USPTO.
However, trademark rights in the U.S., whether common law or registered, do not carry over internationally. Each country has its own trademark regime and trademark registration process that brand owners must follow.
Global Trademark Rights—First to File
In contrast to the hybrid trademark regime of the United States, many other countries have a first to file system, meaning that whoever first files and registers a trademark is considered the rightful owner of the mark in association with its registered goods and services. Additionally, the majority of countries require a trademark registration for a brand owner’s trademark rights to be recognized. Unlike the U.S., there are no common law trademark rights in those countries.
Accordingly, in a first to file system, it is important to apply for trademarks as expediently as possible. If the brand owner does not immediately seek to secure rights in a mark abroad, prior-filed applications may block international expansion. This can seriously impact the value of the brand portfolio and potential acquisition, as larger companies looking to acquire smaller brands will be doing their due diligence to make sure that the brand can expand internationally.
Trademark Filing Strategies Clearance
It is imperative to have trademark filing strategies in place in the early stages of brand development, rather than having to play catch-up once parts are moving, marketing is increasing, and the opportunity for leaks is escalating. A written process will help to ensure that the brand is protected domestically and internationally. It can also prevent later scrambling to acquire trademarks that may have been unintentionally pushed aside, or rebranding if the selected trademark is unavailable.
The first step in any trademark strategy, once trademarks have been selected or narrowed down for consideration, is clearance. Clearance involves searching to determine whether a trademark is actually available for both use and registration by the brand owner. A clearance search considers both the distinctiveness of the desired trademark (in other words, whether it is capable of functioning as a trademark), as well as the similarity of the desired trademark to other trademarks in the same market.
It is recommended that the brand owner seek assistance from practitioners who know how and what to search to determine if the selected trademarks are available for registration. This is particularly important when the brand owner must evaluate the risks posed by third-party marks that are similar to the desired mark, and whether any existing marks would block the brand owner from using the trademark on the market in the U.S. or abroad.
Trademark and Country Prioritization
Brand owners place varying degrees of value on different trademarks. However, the most important marks that a brand should always be thinking about are its house mark (often the name of the company or a major product line), followed by its major product names. Secondarily, the brand owner should consider whether there will be any regional variations that it wants to secure in different parts of the world. Third, the brand owner should consider whether it is interested in protecting any other marks, slogans or even unique packaging that its goods are sold in association with. Packaging may be a key identifier of the brand, so it is important to decide early on whether the brand owner is interested in pursuing additional protection for the overall look of its products.
Once it decides which trademarks to pursue, the brand owner must decide where to pursue trademark registration. The brand owner should consider not only its key markets in terms of sales volume, but where it manufactures its goods, and where it may want to seek distributors or licensees for its marks. Numerous international treaties allow one to efficiently file a trademark application for a large number of countries at the same time. The ability to file in multiple countries is a key consideration to saving the brand owner both time and money in securing its global trademark rights.
Perhaps the most well-known method of filing a multi-country trademark application is the Madrid Protocol. The brand owner first files a trademark application with their home country trademark office and may extend that application to additional countries. The multi-country application is reviewed by the home country trademark office, which then sends it to the World Intellectual Property Organization (WIPO) for WIPO’s review. If the multi-country application meets WIPO’s requirements, WIPO will then send the application to each country’s trademark office where the brand owner has applied.
The Madrid Protocol currently includes over a hundred member countries, allowing a brand owner broad reach in an efficient and cost-effective multi-country application. However, the primary downside to using the Madrid Protocol is that the survival of the additional-country applications in are dependent on the home country application for five years. In other words, if the home country application does not survive in the first five years of a multi-country application, all of the multi-country filings would fail due to the failure of the underlying home country application. In contrast, applying to each country with a separate application would cause each application to stand or fall independently of what happens to the applications in other countries, but may cost much more.
Another common multi-country trademark application process is via a European Union Trademark registration (EUTM). The brand owner may file a trademark application that covers all member countries of the European Union in a single application, rather than filing in each country individually. As with the Madrid Protocol, the brand owner may save money by filing through this method. However, the application will only succeed if the mark clears in all E.U. member countries. In other words, the application will fail if there are prior conflicting rights in any E.U. member country.
Finally, the Paris Convention is an international agreement that allows brand owners six months from the date of their home country trademark filings to file subsequent foreign trademark applications while retaining their filing priority dates from their home country application. This six-month period helps to safeguard brand owners in the event that their foreign filings are delayed and trademark squatters attempt to register the desired mark in foreign markets (which are first to file) before the brand owner has the chance to do so. However, to avoid the risk of a trademark battle in a foreign country, it is still best practice for a brand owner to seek registration in major markets as soon as is practicable rather than waiting to do so.
Watch Service
Once a brand has secured its trademark registrations, an ultimate step is procuring the services of a trademark watch service. For a few hundred dollars a year, these specialized firms monitor trademark filings in target markets to warn brand owners of potential problematic marks that may arise after the brand’s trademark registration. Trademark monitoring is important in defending a brand’s existing rights and preventing dilution of its trademarks, providing the brand owner with notice that it may need to oppose these filings.
Conclusion
An articulable trademark strategy will save brand owners time, money, and future headaches when seeking to launch new products in the United States and abroad. Protecting one’s trademarks is vital to cultivating brand value and ensuring that a brand is able to expand its markets or appeal to potential acquirers. NIE
Manon Burns
manon@amintalati.com
Manon Burns is an attorney in Amin Talati Wasserman’s Trademark & Copyright Protection Group. She has several years’ experience in intellectual property litigation and helps clients with protecting all aspects of their intellectual property rights. While her current practice focuses on trademark and commercial litigation, Burns counsels clients on all forms of intellectual property acquisition and policing, including trademark, patent, and copyright. She serves as co-chair of the Chicago Bar Association’s IP Committee and as a committee member of Chicago Women in IP (ChiWIP).
Ryan Kaiser
ryan@amintalati.com
A partner in Amin Talati Wasserman’s Trademark & Copyright Protection Group, Ryan Kaiser specializes in the protection and enforcement of trademark rights for businesses of all sizes. Kaiser’s diverse trademark practice includes counseling clients on the selection of new marks, clearance searching, U.S. and international registration, licensing, portfolio strategy, anti-counterfeiting measures, enforcement, oppositions, and litigation. He also assists clients with the protection, enforcement, and licensing of copyrights.
