Basics About Applying for an International Trademark
At some point, business owners and individuals dealing with international trade will find themselves asking, "How can I register a trademark internationally?"
Knowing how to apply for a trademark is important for companies or individuals who intend to sell their products or services globally. It's one way of protecting their investment by ensuring nobody else can duplicate their products or use them for nefarious purposes.
Anatomy of a Trademark
A trademark serves as a symbol for a brand, company, or individual. Most people also refer to this as a brand name or a logo. Any distinct symbol, slogan, or mark can become a trademark once it is registered and protected by law, prohibiting other entities from using them.
Types of Trademarks
Understanding how each type differs is essential because it can affect whether an application is accepted or rejected by the trademark office.
The five major trademark categories are the following:
Descriptive
This type of mark identifies one or two essential product or service characteristics. For example, Coca-Cola is a descriptive trademark since its main component is coca leaves. Another example is Western Digital, a tech product company based in the Western United States, mainly California.
Fanciful
A fanciful trademark is made up of words created for the primary use of the brand only. A few examples of this include Clorox, Rolex, Lexus, Verizon, Pepsi, and Polaroid. They may be part of the general public's vocabulary now, but these words used to not exist.
Arbitrary
Second only to fanciful trademarks when it comes to offering the most protection, arbitrary trademarks are the type that carry no direct link to the company's industry. A few of the biggest companies in the world use an arbitrary trademark, such as Apple, Amazon, Virgin, or Dove. These are memorable since the trademark name has nothing to do with the company's products or services.
Generic
A generic trademark isn't counted as a real trademark since they offer no protection. For example, a fitness center cannot trademark the word "gym" because it's commonly used in the industry. However, a generic trademark can be transformed into a fanciful trademark with clever additions. One example of a company that has done this is the British fitness brand, Gymshark.
Suggestive
This type of trademark contains a link between the mark and the services or goods provided by the company. The association isn't immediately identifiable, but it should exist. The trademark uses phrases or designs that suggest the quality or trait of the service or product. Some examples of this include Jaguar, Microsoft, KitchenAid, and Greyhound.
Other types of legal protection that are similar to a trademark:
Trade Dress
This includes any identifying visual element of the product or its packaging. A trade dress can include the shape of the packaging, the color, the size, the texture, or any graphics it may have. These things are subject to trademark since they are distinctive, and consumers can associate them with the product or brand. A few examples include the unique red soles found in Christian Louboutin shoes or the Hershey's chocolate kiss shape.
Service Mark
Instead of a trademark application, companies offering services can apply for a service mark. It's important to note that a company can have a trademark and a service mark simultaneously.
One popular example of this is McDonald's. The fast-food giant provides a service, offering fast-food products to consumers. They offer The Big Mac, a distinctive product with its own trademark within their services.
Benefits of Having a Trademark
Applying for a trademark provides businesses with several benefits, listed below.
1. It offers legal protection
If lawsuits come up, the company with the trademarked identity will be afforded protection and the verdict can sway in their favor. Alternatively, if others copy the trademarked product, the owning company can legally sue the copycat for infringement.
Having an international trademark is beneficial for this reason as well. However, the company would need to be registered with a trademark in the country where the legal issues arise.
2. It creates brand recognition
Startup companies and individuals who take time to apply for an international trademark can increase their chances of having customers recognize their brand faster. A distinctive trademark will also help set them apart from the competition.
3. It attracts investors and future employees
Investors are likely to support a business if a company has a trademarked business name. Not only does this showcase commitment but it also signals the company's desire to grow and become an established name. This will also prove attractive to future employees if the company intends to grow and expand globally.
How to Register a Trademark Internationally
Before dealing with the actual process, it's important to understand that each country has its own trademark rules. This also means the approval for each application is at the country's discretion based on their local register.
The one exception to this rule is countries belonging to the European Union (EU). The European Trademark encompasses trademark registration for all its member countries, so brands only need to register once.
Luckily, there is a way to make international trademark applications go faster. This is by taking advantage of the Madrid Protocol. Lets review the Madrid Protocol's basics application.
What is the Madrid Protocol?
The Madrid System, also called the Madrid Protocol, is an international trademark system managed by the Geneva-based World Intellectual Property Organization (WIPO). It was created to make filing for international trademarks less cumbersome.
Usually, those who want to apply for an international trademark will need to hire a local attorney in the desired country to process the application. However, with the protocol in place, only a standard application needs to be filled out and submitted to the country member of the treaty. The company only needs to check the boxes of the other countries they also wish to apply for trademark rights. This same application is forwarded to all the other countries and will be reviewed.
Advantages and Disadvantages of the Madrid Protocol
The great thing about using the Madrid System is it saves companies the cost of hiring and paying for lawyers in each country. Renewals and changes are managed in one place, and the system also makes it convenient to register additional countries.
On the other hand, a disadvantage to using this is that if the application is refused by the home country (for instance, the United States), all the other filed applications will be automatically refused.
Another disadvantage to this is that some countries might still issue refusals, leading the company to hire local counsel anyway.
Step-By-Step Process for Filing an International Trademark Application in the United States
Since the United States is a member country that us the Madrid Protocol, any company that registers their trademark here also can apply for an international trademark during the process.
Here is a step-by-step guide on how to register a trademark internationally via the United States Patent and Trademark Office (USPTO).
Step 1. Determine the kind of trademark to register
There are two main types of marks to choose from: a standard character drawing or a special form drawing. A standard character drawing shows the mark in text only with no special font, design, or color. Meanwhile, a special form drawing involves a mark with designs, graphics, stylizations, or color. Companies can only send one mark and one drawing per application.
If a company chooses a special form drawing, they will be required to submit a JPG or drawing, along with a description of the mark. It's not possible to change to a different mark after the application is submitted.
Step 2. Perform a trademark search comprehensive to ensure no other company has a similar trademark
There is a chance the USPTO will deny an application if the trademark is too similar to another registered mark since this can cause consumer confusion.
Step 3. Classify the goods or services tied to the trademark and identify the filing basis
Correctly identify if the mark will be used for goods or services. Goods refer to the products a company sells, while services are activities done for other people. The USPTO's Trademark Manual of Acceptable Identification of Goods and Services is a great reference to look for acceptable definitions of goods or services.
For the filing basis, there are four options a company can use:
Use in Commerce – Use this if the trademark is already used "in commerce" like goods or services sold locally or internationally
Intent to Use – Use this if there is an intention to use the mark in the next three to four years
(Section 44(d) Foreign Application Exists for the Same Goods or Services – Use this if there is a foreign application for the same trademark submitted within six (6) months of processing the U.S. application.
(Section 44(e)) Foreign Registration Exists for the Same Goods or Services – Use this if a foreign registration already exists for the same mark. If there is, a company needs to provide all the necessary information including the registered foreign certificate.
Step 4. Once all the information is ready, start filling out the application
There are two options for filing: TEAS Plus and TEAS Standard. The main difference is the number of requirements needed upfront and the fees. Those applying online can pay via credit card or do an electronic fund transfer for payment.
At this point in the process, companies can fill out a form called "International Application" to indicate their desire to register their trademark internationally.
Step 5. Track the application and address any issues brought up by the examiner
After the application is submitted, it's assigned to a USPTO attorney who will examine all the submitted documents for validity. For issues, an "Office Action" notice will be sent out and the company has six (6) months to address the issue.
Step 6. Wait for the results
Approved trademarks are published in the weekly USPTO publication. If there are no objections from other companies who may find the trademark too similar to theirs, then the entire application process is finally done. However, those who receive a letter of rejection have the option to appeal their case for a minimal fee.
Frequently Asked Questions
How long will the entire application process take?
The entire process takes between eight (8) to ten (10) months from beginning to end. This length of time can be longer if there is an "Office Action" issued for the application.
How much does an international trademark registration cost?
Several factors can affect the cost of an international trademark application. For the filing fees, TEAS Plus requires $250 for every class of goods or services, while TEAS Standard requires $350 for every class of goods or service to be registered.
The number of goods and services included in the application can cause the fee to go higher. There are companies that offer flat fee packages to assist in the filing of a trademark application.
How long does a trademark last?
Once a trademark is registered, it is valid for ten (10) years before it is up for renewal. WIPO or the USPTO does not notify that a trademark is up for renewal, so it is up to the company to manage this process.
In addition, it's important for companies registered in the United States to show proof of use between the 5th and 6th years of registration. This is required to prove the company is still using the trademark.
To sum up, a trademark is an important asset for any business or company. Knowing how to apply for an international trademark is the first step for a company to claim its identity and excel in this current brand-focused business environment.