If you’ve been wise enough to register your trademark (and as our reader, clearly you are), you might be wondering whether registration in the US gives you any protection in other countries. We’ll be straight with you: no, it doesn’t. Trademarks, much like cheetahs, are territorial animals, meaning that they only afford protection in the territory in which they are registered. So, if you register your trademark with the United States Patent and Trademark Office, you only get protection for that mark in the US.
Would it be convenient if trademark registration in the US afforded protection abroad? Sure. Is it necessarily a bad thing that it doesn’t? That depends on your business. So, often business owners are concerned with whether US registration affords them protection abroad, before determining whether they actually need protection abroad. While we may think that worldwide protection is the best way to go, a “more is more” mentality might not be the right one for all trademark holders. For example, it can be challenging to find a brand name that isn’t in conflict with another already registered trademark in the US. If you had to expand that search to even include European registrations alone it could become easily overwhelming. So, while registration abroad might be a super wise move for many business owners, the rest are probably better off avoiding the headache. After all, you don’t want your cheetahs roaming around where they don’t belong.
How do you know whether to protect your trademark outside the US?
The answer to this question depends on whether you feel that your brand has equity outside the US. These days, brand equity abroad is a reality for far more businesses than would have had it a couple of decades ago because, as we all know, The Internets in general, and social media in particular, have changed the business landscape drastically. However, this doesn’t mean that every business with a Facebook page and some aspect of online operations needs to register their trademark abroad. This is a decision that depends a lot on what you are doing now, and what you plan to do in the future. Here’s a few things for you (and your cheetah) to chew on:
Are you currently doing business, or marketing your products/services, in other countries? If you are, then registering in some, if not all of those countries, is probably a wise move, and is something that you shouldn’t waste too much time getting around to. But, your inquiry shouldn’t stop there. Just because you aren’t operating in other countries now, doesn’t mean you never will, which leads us to our next question…
Do you have plans of doing business, or marketing your products/services, in other countries? It’s not enough to consider what you are doing now. In fact, one mistake that many companies make–especially start-ups–is that they think too small. When you are just starting out it can be difficult to imagine that the brilliant goods and services you are offering might one day make big bucks in other countries. You’re all, “I don’t need a cheetah in the United Kingdom. I’m not even sure anyone besides my mom and my creepy uncle Ralph are gonna buy this stuff.” We get it. Really we do. But, depending on your product or service, it’s important to be (realistically) optimistic about your chances of expansion into overseas markets. Obviously, if you are offering services for which you need a professional license, and you would therefore be unable to legally offer overseas, or if you are offering any other kind of good or service over which there are some kind of restrictions (legal or logistical), overseas expansion might not be a realistic option for you. (Hey you! Keep reading to see a possible exception below.) But for the rest of you, the world is your proverbial playground.
When considering your future business plans, it’s important not to rule out the possibility of licensing. While it might not make sense for you to expand your business into overseas markets all by your lonesome, licensing your products/services to individuals/entities overseas might make a lot of sense. In that scenario, it is crucial that your name/logo, etc. is protected by trademark. Otherwise, it may have already been devalued, or exploited, in the new market (read: no one will want to pay you to use it).
Timing is everything
While the issue of timing is a bit easier for the trademark registration process in foreign jurisdictions (for example, for European Community Trade Marks) than it is in the US, timing is still a factor to consider no matter where you apply. In the US, the trademark rights are granted to whomever is the first to use a mark, and you can only apply for a mark that isn’t yet in use if you have a bona fide intention to put it into use, and you are able to show proof of such use generally within 6 months after the trademark has been allowed (approved by the USPTO and not opposed by anyone). By contrast, in the European Community, trademark rights are based on first to register. One can apply for a Community Trade Mark (CTM), without having used the mark in commerce, with a grace period of about five years to show actual use.
While the timeline is a bit more favorable in the EU compared to the US, you should still have some idea whether you intend to use the mark in the new territory. Demonstrations of intent to use generally aren’t as stringent as in the US, but applications filed in “bad faith” (which generally means merely with the intent of disrupting another’s business) won’t be allowed.
So,when determining whether to register your trademark in multiple countries, you should be realistic about your plans to expand into other markets (if you haven’t expanded already), reevaluate those plans regularly, and take action as necessary. Think of it as keeping your cheetah on a tight leash. It’s there to protect the territory in which you operate, but isn’t going around terrorizing folks in places you’d never even plan to go.
