International Trademark Protection
Strategies for protecting your trademark in foreign markets.
Understanding International Trademark Rights
Trademark rights are territorial—a U.S. trademark registration only protects you in the United States. If you do business internationally or plan to expand, you should secure protection in each jurisdiction where you want to be able to establish and enforce trademark rights.
Important: Many countries operate on a "first-to-file" basis and do not recognize common law rights, meaning whoever files first gets the rights—regardless of who used the mark first.
Direct Filing
File trademark applications directly with each country's trademark office.
Advantages
- Full control over the process
- Allows maximum flexibility in customizing goods/services descriptions according to the rules of each jurisdiction
- Registrations not vulnerable to "central attack" like those obtained through the Madrid Protocol
Considerations
- •May be more expensive than using the Madrid Protocol
- •Requires local counsel in each jurisdiction
Madrid Protocol
File one international application through the USPTO to protect your mark in potentially over 100+ countries.
Advantages
- Sometimes less expensive than direct filings
- Foreign counsel not needed at the time of filing
Considerations
- •Foreign registrations are vulnerable to "central attack" on home registration
- •Less flexibility provided to customize goods/services descriptions for foreign jurisdictions
European Union (EUTM)
Single registration covers all 27 EU member states.
Advantages
- One registration, 27 countries
- Cost-effective for EU coverage
Considerations
- •Vulnerable to attack in any member state
- •All-or-nothing protection
Planning to expand your business internationally?
Discuss Your Global Strategy