When and How to Register a Trademark When Going Global

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Last Updated: March 9th, 2021

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Guest Post by Lori Wade 

If you are in a place where you can start to think about taking your business global, you should congratulate yourself and your team. You must have worked very hard to grow your business to become strong enough to reach this point. That said, when it comes to actually following through and taking your business global, you don’t want to congratulate yourselves too early.

Getting your product or business trademarked in the United States can be a complex process on its own, but successfully extending and registering that trademark internationally is bound to be a whole new challenge.

However, it doesn’t have to be an impossible one. By following these guidelines, you can take your trademark and business global in a big way.

1. Register sooner rather than later 

One of the most important things to recognize when it comes to registering a trademark internationally is that it is better to get started on the process sooner rather than later. The longer you wait, the more chance your application could run into problems.

For one thing, the more time passes, the greater the chance of someone else trying to copy your idea. Until you have trademark protection, your brand can be a “sitting duck” internationally. While this won’t really matter if you are mostly a localized brand operating entirely within your country, or intend to remain a small business, the sooner and faster you grow, the more pressing the need to trademark your company internationally becomes.

Then, there is the prospect of brand squatting. This refers to the process where third parties register a trademark you might want or need first with the sole intention of forcing you to settle with them for the rights to the name or trademarked material in their country.

Consider the curious case of Starbucks brand squatting in Russia over a decade ago. When the coffee giant tried to expand their brand into Russia, they found that someone else had already trademarked the name there, with the sole intent of forcing Starbucks to pay them for the rights to the name.

These are obviously devious business practices, and, even worse, they’re utterly dishonest bad faith attempts to wring money out of companies while providing nothing in return.

That said, going international often means working in countries where trademark and business law isn’t always on the up and up. Just think of all the off-brand trademark forgeries in China.

On the other hand, Russia and China represent huge markets, so for big brands going international, they’re worth the risk. If you’re going to play ball there, you’ll have to play by their rules.

The sooner you become savvy to those rules, and the faster you act on them, the better chance you have at saving yourself a massive headache.

2. Register in your home market first

Before you do any of that, however, you’ll want to register your trademark in your own market. If you operate in the United States, that means going through the USPTO system. If you operate in the EU, that means going through their EU Intellectual Property Office.

3. Register with the World Intellectual Property Organization (WIPO)

The closest thing to an international body overseeing international trademarks is the World Intellectual Property Organization. They operate according to what is referred to as the Madrid System. One hundred and eighteen countries are signatories to WIPO, which covers international copyright law between its signatory parties. You can choose to have your trademark protected in specific countries or all 118 states.

As with any trademark process, you will need to fill out an application and pay fees to obtain and maintain your copyright. When doing so, you will need to make sure that you are filing as a citizen, or as someone legally recognized as being able to do business in the state from which you are filing. This can be a complex process, and if you are not a native or naturalized citizen of the country in which you are filing, you may need to designate another party in that country to act on your behalf.

4. Consider these important factors 

Here are some of the most common international trademark factors to consider when filing:

Cost-benefit analysis — Filing for a trademark can be a costly process both time and money-wise, so ask yourself: Is it worth registering a trademark in all countries you’re targeting? If you are not going to get a sizable return on your investment, the answer may be no. However, if it’s a big market or one in which your company is looking to establish itself, the answer is likely yes.

Overseas operations —For WIPO purposes, you’ll want to note any overseas distributors, manufacturers, partnerships, or other business associations. If you need help filing in a foreign country, these other parties, such as content writing companies like Icopify, can sometimes be helpful.

Future plans — Make sure you know where and when you plan to expand before seeking international trademark protection.

Defensive filings. —To guard against things such as the Russia/Starbucks case or Chinese forgeries, consider preemptive defensive filings in large markets where you plan to expand.

5. Hire an international trademarking legal expert

Last, but not least, you’ll want to hire an international trademark legal expert to handle the process. International trademark law is notoriously tricky and marked by overlapping standards, treaties, exceptions, and laws.

Trying to navigate the process yourself will be difficult, and practically impossible while you devote most of your time to running a business. Turn to a full-time international trademarking expert instead, and make sure they are qualified to work on trademark law in the countries in which you plan to expand.

By following these protocols, you can take your trademarked brand global in a big way. 

Lori Wade is a journalist from Louisville. A content writer who has experience in small editions, Lori is now engaged in news and conceptual articles on business topics. You can find her on LinkedIn

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