Take Your Brand Further by Adding an International Trademark

When thinking of protecting your brand by adding an international trademark many questions may come to mind. One question that might arise is how do I protect my brand or business name globally? Protecting your brand in your country is one way, but trademarking your brand in other countries takes that protection further. Trademark owners can achieve this by pursuing an international trademark application to register a trademark in multiple territories. Trademark owners can achieve this by pursuing an international trademark application. This will protect your brand’s unique identity.

To protect your trademarks, international filings must be submitted to an international bureau or organization. By applying for a trademark internationally you can acquire protection across borders. This will also provide you with access to new markets and opportunities. An international trademark will prevent others from using it without permission and provide you with exclusive rights in various jurisdictions.

As a result, it is important to acquire an international trademark to take your brand further and explore the benefits it brings. There are two ways to begin: either by registering your brand yourself or hiring an attorney to assist you.

8 Steps To Register Brand Name Worldwide

Registering a brand name worldwide requires an understanding of the intellectual property laws, regulations, and procedures in different countries. You should know that each jurisdiction has its own requirements, international bureau and processes for brand registration. We have provided eight steps on how to register your brand name worldwide.

To ensure that you trademark a name worldwide, the steps below will walk you through how to apply for an international trademark.

Search for your brand on an international level, per the Madrid agreement, to know if your brand is already there. You can tie the US national applications to an international application post-filing.

Determine which jurisdiction you want to register your mark in.

Prepare the global application for your brand, incorporating details about your goods or services. Specify the countries in which you want to register the application.

After preparing the application, file your trademark application. If you hire us, we will ensure comprehensive handling of this matter and file your trademark application and documentation.

The trademark office will examine and potentially publish your trademark application once they receive it. We generally estimate that this process will take nine months. If your mark receives a provisional refusal, we will assist with addressing any concerns the examiner has.

Following the examination, WIPO will publish your application for public opposition.

Once the opposition period ends, the application will be registered.

To keep your international trademark registration protected, you must keep up with necessary maintenance filings. Generally, trademark owners will need to file these every ten years to ensure continued trademark protection. However, this period varies by jurisdiction and by country. If you’d like to extend your registration to more countries, we can assist you with filing a new application.

1. Check If a Name is Trademarked Internationally

The first step is to check if a company selling the same or similar goods and services has already internationally trademarked the desired name. This proactive step not only protects your brand identity but also prevents potential legal entanglements.

We carry out this search by utilizing international trademark registration databases specific to each nation you would like to acquire protection in. If we locate a potential conflicting trademark registration, we will pass that information along to you before proceeding. If a similar registration includes similar or identical goods and services, it is particularly concerning.

International Registration Search Systems

Start your process by visiting a major international trademark association or international bureau, like the World Intellectual Property Organization (WIPO). They offer a Global Brand Database, facilitating a comprehensive search. Simultaneously, individual countries maintain their own accessible trademark databases, contributing to a thorough initial examination.

Madrid Protocol International Registration Search

The Madrid Protocol for the International Registration of Marks, based in the Paris Convention and administered by WIPO, is a pivotal resource. The Madrid Protocol is an easy to way search for trademarks across other countries and to facilitate the filing process. It simplifies the process of protecting a mark in multiple countries. WIPO’s ROMARIN database now called Madrid Monitor is another valuable resource in your quest. It allows you to search for international marks registered under the Madrid System. This provides a consolidated view of the name’s status across various jurisdictions. You can do this by using their online platform to look for existing international registrations by mark name or goods and services.

These vital services allow the USPTO (the US’s national trademark offices) to the trademark applicant. You can further protect a trademark registered in the United States via an international application. This international application will retain the same filing date as its national counterpart. This allows for a simplified way to take your application or registration to an international level in a particular country. A trademark owner has the option of extending the protection afforded by the basic registration of a national trademark. An applicant can strengthen their registered trademarks and acquire international protection by expanding a US national application internationally.

Other International Search Systems

Beyond individual countries, consider checking regional trademark databases. For instance, the European Union Intellectual Property Office (EUIPO) maintains a database for its member states. This step ensures that your brand name remains unclaimed within specific regional jurisdictions. This will also assist you with locating a conflicting trademark registration, if one exists.

These database searches will help identify whether there is a preexisting conflicting trademark registration. A prior existing international registration can prevent the registration of your mark and therefore must be identified beforehand. You may still be able to acquire a registration if the mark is registered in other countries. As long as the mark is not registered in the nation you intend to operate within, registration is feasible.

These in-depth and accurate search services possess the tools and expertise to conduct a meticulous analysis of the international trademark landscape. They offer valuable insights into potential conflicts. If you have a US registration and apply for an international registration, you may tie these marks together for a five year dependency period. Play close attention to any formal requirements for maintenance filings during this period. Most countries honor this period.

2. Find Out What Jurisdiction You File Your Application or Registration?

Before you file an international trademark application or registration, you must determine the jurisdictions where you want protection. Different countries or regions have unique, specific requirements and processes.

We assist you with identifying the relevant intellectual property offices or organizations overseeing trademarks in those jurisdictions to protect your commercial establishment.

3. Prepare Your Application For Global Brand Registration?

To prepare your application for global brand registration, start by conducting a comprehensive search using databases like WIPO’s Global Brand Database.

We will adhere to the Nice Classification system for categorizing goods/services (set forth in the 1957 Nice Agreement). We will help you determine the appropriate international registration system and gather the necessary documents. Additionally, we will ensure compliance with the selected system’s specifications before we file at a later date.

4. How To File Your Application: International Trademark Registration

Filing an international trademark application involves submitting the necessary documentation. This includes making sure you have a clear representation of your trademark, a list of goods/services, and applicant details. When your ready to file your application choose which international registration system best fits your needs. Be sure to pay the appropriate cost to complete this process.

We will choose the relevant international registration system, including the Madrid Protocol, and submit associated filing fees on your behalf. We will also submit the application to the designated authorities, including the World Intellectual Property Organization (WIPO). The cost of international trademark registration submissions vary depending on which jurisdiction they are filed in. We will notify you of those costs before we proceed.

5. Navigate the Examination and Publication Stage

After filing, your application undergoes examination by the trademark offices in each chosen jurisdiction. If there are any objections or official actions, you must respond to them.

We will address any objections or office actions promptly, per your approval. Upon approval of the application, the trademark authorities typically publish the trademark. Following the application’s approval, the trademark is typically published. The examination process and requirements are specific to each jurisdiction, so the gestation periods may vary.

6. Learn What To Do With The Opposition Period

During the opposition period, third parties have the opportunity to challenge your trademark registration. Be aware of this timeframe and review the procedures for handling oppositions.

If an opposition is filed, we will take necessary actions to respond to those challenges, guiding you through the process throughout.

7. Next Step After Your Application is Registered

Once your application is approved, it proceeds to registration. Understand the post-registration procedures, including obtaining the official registration certificate. Be prepared to enforce your trademark rights actively by monitoring for cases of infringement.

8. How To Maintain Your Trademark Within The Jurisdiction You Chose

Maintaining your trademark involves adhering to renewal requirements within the chosen jurisdiction. Familiarize yourself with renewal procedures, including timelines and any additional documentation needed. Regularly monitor and enforce your trademark rights to protect your brand effectively.

We will assist you with this process as well and will reach out with updates as we receive them.

Why Hire a Trademark Attorney To Register Your Brand Name Internationally?

Hiring a trademark attorney to help register your brand name internationally can be beneficial. They can help you establish a global presence for your business. The attorney will navigate the intricacies of each system, ensuring compliance with the regulatory frameworks of various jurisdictions. Also, they have an in-depth understanding of international trademark laws and how to draft an international application.

At the Leavitt & Eldredge trademark law firm our attorneys will walk you through the registration process. We will assist in formulating a strategic plan tailored to your business goals. We will provide guidance on the best strategy to secure trademark protection in the countries you intend to expand into. This will involve filing an international application through the Madrid Protocol.

To begin, you will need to provide all the information about your mark and officially retain our firm. Next, we will conduct a comprehensive search to identify existing trademarks globally. Then, we will prepare an international application and file it with precision. This includes crafting a compelling representation of your mark and providing all necessary documentation is accurate and complete. This confirms that your international application is in strict adherence to the terms of the Madrid Protocol. We will initiate an application through the World Intellectual Property Organization (WIPO). We will also submit the application through every jurisdiction in which you intend to do business.

During the post-registration period, our attorneys will actively monitor your trademark and identify necessary renewal filings. In cases of unauthorized use by third parties, we can take swift legal action to protect your brand and its associated rights. We will take this action based on your instruction. With our ongoing support, you can ensure you maintain the integrity of your trademark protection over time.

Conclusion

The importance of protecting your brand identity is crucial. To maximize your protection, we can help you extend your national trademark protection to multiple international territories. This ensures comprehensive coverage and safeguards your brand across diverse regions.

This will extend the intellectual property rights afforded by a national trademark to several designated countries. They are filed through one basic application with the same filing date and priority date. The same owner will retain subsequent designation. We will file this international application online, and will monitor any international trademarks you receive. This will meet the terms of the Madrid Protocol and the national trademark office.

There is no consistent basic fee. Other jurisdictions within WIPO, that adhere to the Madrid Protocol, assign their own variable fees. We will confirm those fees for you prior to filing. Please know that international applications will only be viable within a member country of the WIPO that adheres to the Madrid Protocol.

A country that you are interested in doing business may not adhere to this international system and may not honor the Madrid Protocol. If so, our firm might need to retain local counsel in said country. This partnership would allow us to work with the intellectual property office in that country to guarantee protection. This will ensure you get your international trademark registered per the requirements of that country’s trademark office.