A Guide to the Successful International Registration of Trademarks in the US | LegaMart Articles
A Guide to the International Registration of Trademarks in the US

A Guide to the Successful International Registration of Trademarks in the US

International registration of trademarks is possible after reading this article.

I was about to fail my first exam in law school. Reading the questions once more, I glanced at the other students in the hall, writing as if a thief was chasing them with a pistol. 

And me? I started calculating how much it would cost to set up a nice little bakery downtown when the university board kicked me out! What would I name my bakery? “Stop n’ Chop?” 

No, that was too common. I decided on something more fanciful, like “Grover Pastries.” Maybe if my business succeeded, I could file a trademark application for my brand someday. Grover Pastries ®. And then, I would make millions of dollars and eventually register my trademark internationally. Bingo! Now, all I had to do was read all of this, open my bakery, and live my dream life.

What to do before filing a trademark application in the US

Before filing a trademark application in the US, you must choose a mark, such as a brand name or logo, that will later be registered by the United States Patent and Trademark Office (USPTO). The USPTO specified two important factors to consider when selecting a mark: likelihood of confusion and mark strength.

When your mark is similar to that of another company, there is a chance of consumers mistaking your product for the other company’s. Similarities include logos, designs, fragrances, and tastes, among other things. 

For example, if the mark “TWEEDLE” is chosen for a cologne you created while a body sprays with the mark “T.WIDYL” is already on the market, consumers who are new to wearing “T.WIDELY” may mistake the cologne you created for “T.WIDELY” the next time they want to buy it. And if both products have similar fragrances, it will take a trained nose to tell the difference.

In general, the greater the likelihood of confusion between your mark and that of an existing product, the greater the likelihood of the USPTO rejecting your trademark application.

Also, the strength of a mark is determined by how easy or difficult it will be to protect it. Generic words and descriptive terms should not be used for trademark applications. Fanciful words (those with no known dictionary meaning, such as “Indomie”) and arbitrary words (those with dictionary meanings but used as marks for products unrelated to their meanings, such as “potato” for shoes) are the strongest marks and the easiest to protect if infringed.

Before proceeding with the trademark application, search the USPTO database for similar trademarks. If no marks identical to yours appear in the search results, you’re good to go. 

The article below helps you out with startups ongoing process:

 Managing the Legal Process of a Startup: Early Stages 4 Magic Tips

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How to File a Trademark Application Online in the US

To file a trademark application in the United States, first create a USPTO account and then apply through the Trademark Electronic Application System (TEAS). The TEAS standard, which has a higher processing fee and a shorter application procedure than the TEAS plus, can be used. Whether you use TEAS standard or plus, your processing fee will not be refunded if your trademark application is ultimately rejected.

During the application process, you have to indicate the “filing basis.” As of now, there are four different bases on the USPTO website:

Use in commerce

When the mark is used to brand commercial goods and services.

Intent-to-use

When you intend to use that mark for commercial purposes in the future.

Foreign registration

When the mark has been previously registered in another country.

Foreign application

When you have applied for the registration of that mark in another country within six months before your US application.

The basis you select will have an impact on your application, later on, so exercise caution.

Then, every six months, you should check the Trademark Status and Document Retrieval to see how far your application has progressed. If you move or lose access to the email address you used during the application process, you must update your physical and email addresses on your USPTO account.

If the application meets basic filing requirements, the USPTO will forward it to an examining attorney who will review it for any defects within some months. 

If your application is approved by the examining attorney, it will be published in the USPTO’s weekly “Official Gazette.” Any member of the public who opposes the registration of your mark within thirty days of its publication may file an opposition with the Trademark Trial and Appeal Board (TTAB). If no one objects to your trademark, feel free to dance a little.

The trademark registration process

At this stage, if you selected “use in commerce,” “foreign registration,” or “foreign application” as the basis for your trademark application, the USPTO will register your mark and issue you a certificate of registration.

Thereafter, it’s your responsibility to keep the trademark live by filing specific maintenance documents. Failure to do so can result in the cancellation or expiration of the trademark registration. 

If you chose “intent-to-use” as your filing basis, the USPTO would send you a notice of allowance eight weeks after publishing your mark in its “Official Gazette.”

A notice of allowance “allows” you to use the mark for commercial purposes within six months from the date the notice was issued and file a Statement of Use (SOU). If you are unable to commercially use your mark within six months, you can file a request for an extension of six months.

Within two months of the USPTO approving your SOU, the USPTO will issue you a certificate of trademark registration. Unfortunately, submitting an SOU does not guarantee that it will be approved. In the latter case, your processing fees will not be refunded.

Maintaining Your Trademark Registration

While filing relevant documents, you must also check the status of the trademark registration every year, particularly when the trademark is 5,6,9, and 10 years old. 

International Trademark Application

If you want to protect your trademark in countries other than the United States, you can either register the trademark separately in each country where you want the trademark protected, or file an application with the WIPO for international trademark protection under the Madrid convention.

But first, what is the Madrid system?

It is a cheaper and more convenient solution for registering and maintaining trademarks worldwide. With only one application, you can obtain protection for your trademark in up to 128 countries worldwide. 

You can use the system only if you have an established personal or commercial connection with any of the 128 countries covered by the system, i.e., you must live in, be a citizen of or conduct business in that country.

Rules Guiding International Trademark Application

WIPO specifies two rules (more like requirements) that must be followed when filing an application for international trademark protection. They are:

  1. You must submit your application through the IP office of any of the countries or regions registered under the Madrid convention with which you have a personal or commercial connection. That IP office is regarded as your “IP office of origin.”
  1. You must have applied for or obtained a domestic trademark in any of the countries covered by the Madrid system. Note that you must submit your application to the IP office of the same country or region where you obtained or are applying for the domestic trademark. 

International Trademark Search Database

Before submitting your international application, double-check that your mark will not infringe on any existing trademark anywhere in the world. Of course, you can file without running the background check, but you risk being sued for trademark infringement in the future.

Where were we? Oh yes,__ searching for trademarks. 

The most reliable source of this kind of information is the global brand database of WIPO itself. You can conduct any trademark search by text or pictures and view the displayed results at the speed of light. 

Filing Your International Application

You can file an international application in three ways.

Downloading and manually filling out the MM2 form:

It is available in English, French and Spanish versions. 

Using the Madrid Application Assistant:

WIPO actually recommends this tool because it imports all information concerning your basic mark from the database of your IP office of origin into the electronic MM2 form. 

The Assistant is faster, and more efficient and also reduces the risk of filing irregularities that hamper the approval and registration of your mark. Once it has completed the application, it provides you with the PDF version of the completed application that you will submit to your IP office of the origin.

Using the Madrid e-filing system:

If the Application Assistant is not supported in your region, you can use the e-filing system instead. It operates in a similar manner as the Assistant. 

All interested candidates whose IP office of origin is USPTO must, in addition to the form MM2, complete and submit a form MM18, which specifies how they intend to use the mark. 

Regardless of which of the three ways you use, you must file your international application with your IP office of origin. From there, the application will be forwarded to WIPO after it has been approved by the domestic IP office. You cannot send your application to WIPO directly.  

Fees for International Registration of Trademarks

All fees for international trademark registration must be paid directly to WIPO. You must pay the basic fee for international registration, an additional fee for each country where you want to use your mark, and an additional fee for each class of goods and services that exceeds three items.

The basic fee for a black-and-white mark under the Madrid system is 653 Swiss francs, while the basic fee for a colored mark is 903 Swiss francs. Additional fees vary depending on the countries in which you want your trademark to be protected.

To determine the total amount of fees you should pay, use the “fee calculator” included in the form MM2.

WIPO provides four methods through which you can pay those fees. 

Your current WIPO account:

Include the relevant details of your current WIPO account in the form MM2. Alternatively, you can submit a document requesting WIPO to debit the fees from your current WIPO account. The Madrid online payment system also allows you to pay the fees with ease.

Bank transfer:

After transferring the total amount you intend to pay to WIPO’s official bank account, indicate your payment details in part C of the Fee Calculation Sheet in Form MM2. 

Remember to provide those details before you send your form to your IP office of origin. If you don’t, your international application will be delayed. WIPO might also send you a notice of irregularity, which can take some time to sort out. 

Credit card payments:

You can use this option only in special instances. For example, if you’re filing your international application for the first time, you cannot pay your processing fees with your credit card.

 But when you have already registered your mark and want to expand the scope of the mark’s coverage, you can pay the additional fees for that using your credit card. Credit card payments are also accepted from candidates who want to renew their trademarks. 

International Trademark Registration Procedure

When the international application is accepted by WIPO, the official trademark registration procedure begins. This process is similar to the one your basic mark application went through at the national level. WIPO will review your international application to ensure that it is free of errors and that you have met all of the requirements.

If some defects are found in your application, you will be notified via email and instructed to correct the defects as soon as possible. What happens if you refuse to make the necessary corrections? Your application will be considered abandoned. And no, WIPO will not refund your processing fees.

Assuming all goes well and your application is published in WIPO’s International Trademark Gazette, WIPO will forward a copy of it to the intellectual property office of each country in which you requested to have your trademark protected. 

Those IP offices will compare your mark with the existing trademarks in their respective countries to determine if there are possibilities of you landing in a trademark dispute with any of their trademark owners. If they feel your mark is safe to protect, they will publish it in their various national gazettes. 

Again, this mark of yours will be open to scrutiny and opposition from the public for over a year in those countries, after which it will be granted protection (if no successful opposition to it arises). 

Now that the process is over, all you have to do is monitor and enforce your trademark. As it is with legal matters, you will definitely need a trademark attorney to help you out. Good luck!

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