17 min
Podcast 7: How to Protect Trademarks Globally Trademark Titan Blog Podcasts: Trademarks, Trademark Law, Copyrights, Copyright Law, Patents, Branding Laws
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- Business
Trademark Registration Protection for Global Expansion – How to Protect Trademarks Globally
Podcast Episode Begins as :45s
How to Protect Trademarks Globally
How to Protect Trademarks Globally and Maximize Company Goodwill and Asset Valuations.
This post summarizes how U.S. and global trademark rights are created and the importance of trademark registration for national and global brand expansion.
I. Introduction
U.S. brand owners should register their trademarks with the U.S. Patent and Trademark Office (“USPTO”) to receive the full protection of U.S. trademark laws. Otherwise, failure to do so may restrict future geographic expansion of branded products.
Furthermore, companies conducting international business should also seek trademark registration in countries where they conduct business because the majority of countries do not recognize trademark rights absent a country trademark registration, except under rare circumstances. Accordingly, even if companies have used their marks for many years globally without registration, the majority of countries will not recognize that use as creating any trademark rights.
Those issues may limit a company’s ability to expand nationally and internationally. Furthermore, those issues may present serious concerns during a sale of a company or company’s assets and may affect purchase price, since buyers expect sellers to adequately protect their intellectual property in countries within which they conduct business and are not eager to buy uncertainty.
II. How are Trademark Rights Created and How to Protect Trademarks Globally?
There are two primary ways in which trademark rights are created globally and they are as follows:
1. “First to file” principle: meaning whoever files a trademark application first, and secures trademark registration, is generally considered the trademark owner of the registered mark for the listed products in the majority of countries.
2. “First to use” principle: meaning whoever uses a mark first is typically considered the owner of the mark for the associated products (assuming there are no earlier-filed trademark applications). However, trademark rights are created only in the geographic regions within which the mark is actually used – leaving open other geographic regions for other parties to create rights in the same or confusingly similar mark, which may block both parties from freely expanding their brands nationally.
Accordingly, obtaining trademark registration in first to use countries is recommended for securing future geographic expansion rights, as well as for other valuable rights.
Therefore, brand owners must understand that their U.S., or home country, trademark rights and registrations typically do not provide any trademark rights in other countries, since trademark rights are country specific.
III. Global Trademark Registration and Strategy Considerations
Brand owners should prepare laser-focused filing strategies based upon core trademarks, core products and key countries and avoid the “reactive strategy.” A “reactive strategy” is one that responds to “emergencies” at the detriment of protecting the core marks and products, while exhausting the annual budget. Companies must also make difficult decisions regarding which of their trademarks and products to protect and where to protect them. They should also review their filing strategies periodically and modify them, as necessary.
Accordingly, trademarks should be prioritized based on “value,” which may include the following factors:
First tier: includes house marks and major product names used in all markets
Second tier: includes important product names used in all markets
Third tier: includes important names used in certain regions, and sub-brands
Fourth tier: includes slogans.
Trademark Registration Protection for Global Expansion – How to Protect Trademarks Globally
Podcast Episode Begins as :45s
How to Protect Trademarks Globally
How to Protect Trademarks Globally and Maximize Company Goodwill and Asset Valuations.
This post summarizes how U.S. and global trademark rights are created and the importance of trademark registration for national and global brand expansion.
I. Introduction
U.S. brand owners should register their trademarks with the U.S. Patent and Trademark Office (“USPTO”) to receive the full protection of U.S. trademark laws. Otherwise, failure to do so may restrict future geographic expansion of branded products.
Furthermore, companies conducting international business should also seek trademark registration in countries where they conduct business because the majority of countries do not recognize trademark rights absent a country trademark registration, except under rare circumstances. Accordingly, even if companies have used their marks for many years globally without registration, the majority of countries will not recognize that use as creating any trademark rights.
Those issues may limit a company’s ability to expand nationally and internationally. Furthermore, those issues may present serious concerns during a sale of a company or company’s assets and may affect purchase price, since buyers expect sellers to adequately protect their intellectual property in countries within which they conduct business and are not eager to buy uncertainty.
II. How are Trademark Rights Created and How to Protect Trademarks Globally?
There are two primary ways in which trademark rights are created globally and they are as follows:
1. “First to file” principle: meaning whoever files a trademark application first, and secures trademark registration, is generally considered the trademark owner of the registered mark for the listed products in the majority of countries.
2. “First to use” principle: meaning whoever uses a mark first is typically considered the owner of the mark for the associated products (assuming there are no earlier-filed trademark applications). However, trademark rights are created only in the geographic regions within which the mark is actually used – leaving open other geographic regions for other parties to create rights in the same or confusingly similar mark, which may block both parties from freely expanding their brands nationally.
Accordingly, obtaining trademark registration in first to use countries is recommended for securing future geographic expansion rights, as well as for other valuable rights.
Therefore, brand owners must understand that their U.S., or home country, trademark rights and registrations typically do not provide any trademark rights in other countries, since trademark rights are country specific.
III. Global Trademark Registration and Strategy Considerations
Brand owners should prepare laser-focused filing strategies based upon core trademarks, core products and key countries and avoid the “reactive strategy.” A “reactive strategy” is one that responds to “emergencies” at the detriment of protecting the core marks and products, while exhausting the annual budget. Companies must also make difficult decisions regarding which of their trademarks and products to protect and where to protect them. They should also review their filing strategies periodically and modify them, as necessary.
Accordingly, trademarks should be prioritized based on “value,” which may include the following factors:
First tier: includes house marks and major product names used in all markets
Second tier: includes important product names used in all markets
Third tier: includes important names used in certain regions, and sub-brands
Fourth tier: includes slogans.
17 min