Foreign trademark coverage: Direct applications vs. an International Registration

Trademark rights are territorial.  This means that if you own a U.S. trademark registration, your rights are confined to the U.S. and someone else might be able to claim exclusive ownership of your trademark mark in another country.

U.S. trademark owners who are considering doing business outside the U.S. are well-advised to secure their trademark rights in those foreign jurisdictions of interest.  Unlike the U.S., many countries are “first-to-file” countries, meaning that you must have a registration in that country in order to claim exclusive rights to use your mark and license it to others.

Foreign Applications vs. an International Registration

A U.S. trademark owner seeking trademark rights in a foreign jurisdiction has two possible options: filing a direct, national application in a particular country or filing an International Registration (known as an “IR”) through the World Intellectual Property Organization (WIPO). 

An IR is a cost-effective, streamlined, and centralized way to file and manage foreign trademark applications and registrations.  An IR offers coverage for over 100 countries and jurisdictions (you can find a complete list at http://www.wipo.int/madrid/en/members/).  The owner of a U.S. trademark application or registration may, after filing his or her U.S. application or with a U.S. registration already in hand, use the WIPO system to file and IR designating any countries of interest (provided that the owner is a U.S. national or is domiciled in the U.S. or has a “real and effective industrial or commercial establishment” in the U.S.). 

An IR filing made through the U.S. Patent & Trademark Office (USPTO) costs: (1) 653 Swiss Francs for the basic IR filing fee; (2) $100 for the USPTO certification fee (per trademark class); plus (3) the application fees for each designated foreign territory.  On this last point, WIPO provides a useful calculator to ascertain application fees for each country or region (which can be found here http://www.wipo.int/madrid/en/fees/calculator.jsp).  Once an IR is filed and deemed acceptable, WIPO sends the application off to the respective designated trademark offices for examination.  Once those offices review and accept the application, an IR is effective for 10 years and is renewable for additional 10-year periods.

While an IR is a convenient and potentially cost-saving method for filing multiple foreign applications, it has a notable Achilles heel.  An IR based on a U.S. application or registration is dependent on that U.S. application or registration for a period of five years.  That means that, if that U.S. application is rejected or that U.S. registration is cancelled, the entire IR - and all of its country designations - will fall like a house of cards.  For this reason, an IR may carry more risks than a direct, national application, which stands or falls on its own.  As such, an IR applicant who has owned his or her basic U.S. registration for five years severely diminishes the risk of filing an IR.  An even better candidate is an owner of an incontestable U.S. trademark registration, where after five years of registration, that owner has filed an affidavit with the USPTO indicating continuous use in commerce since the date of registration.

Beyond the vulnerability of the underlying U.S. application or registration, the IR applicant who designates only one or two countries may not save more money by filing an IR instead of a direct, foreign application.  This is true because, as mentioned above, the IR applicant must pay the additional basic fee (653 Swiss Francs) and the USPTO $100 certification fee.  These additional fees are not incurred when filing national applications, though it must be noted, local counsel’s legal fees would be incurred.  Regardless, if the IR runs into an objection from one of the designated jurisdiction’s trademark offices, the IR applicant will have to engage local counsel either way.

Bottom line

An IR is a great option, but is not suitable for everyone.  Talk to a qualified trademark lawyer about your options to learn the best way to protect your trademark abroad and devise a global strategy.

 

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