By Ashley Long
If you are a startup company, your brand (your trademarks) may be one of your most important items of intellectual property. Protecting your brand through one or more federally registered trademarks is usually a really smart move. For not very much money, you can obtain federal rights allowing you to stop subsequent users from adopting your brand. If you simply use your brand, you obtain common law rights to it–but these common law rights provide limited protections.
A related question, once you have filed for your U.S. trademarks, is whether to file for protection outside the U.S.
When To File For Trademarks Outside the U.S.
If your brand is going reach beyond the U.S., and if you plan to expand your business operations abroad, then it is a good to at least consider foreign trademark filings.
Trademark rights are granted on a country-by-country basis. As such, your use or registration of a trademark in the U.S. won’t give you trademark protection beyond our borders.
Let’s start with how the U.S. is different from other countries. In the U.S., just using a brand in commerce will grant you some legal rights over the brand. Many jurisdictions, however, are “first-to-file” countries. That means whoever registers a trademark first – regardless of whether they’re using it – is the owner of the mark. For example, both China and Japan are “first-to-file” countries.
Filing in all of the countries around the world can be an imposing proposition – both logistically and economically. Here are some things to consider before commencing any foreign filings:
- Will my brand have any presence in that country/region?
- Am I willing to enforce my trademark rights if something goes wrong there?
- Are the jurisdictions first-to-file or first-to-use countries?
If you’ve recently filed a trademark application in the U.S., you have a little breathing room before making any foreign filing decisions. As long as you proceed with your foreign filings within 6 months of your U.S. filing date, your trademark rights in the foreign jurisdictions will be retroactive to the U.S. filing date. This is important because it means that, even if a conflicting trademark was filed before yours, you are still first in line if your U.S. date predates the other filing. (You can file after the 6 month priority deadline, you just won’t have the benefit of the U.S. filing date.)
Questions about foreign filings? Please feel free to contact us for more information!