Small Business Primer to
Filing for Trademarks in a
Foreign Country
Practically anyone can file
for and own a registered
trademark for just about every
good or service imaginable.
Even individuals or small
businesses with the need to
use only one trademark (name
brand, design, logo, slogan or
combination thereof) can
benefit from the protection
that registration offers. A
registered trademark provides
public notice as to the origin
and source of a product or
service, offers legal
protection for creative
efforts and most importantly,
establishes a property
interest.
Filing in
the U.S. is still the first
choice among most businesses;
however, filing abroad is a
smart undertaking for those
that sell their goods or
services outside of the U.S.
For instance, the protection
of trademarks for software and
electronic goods and services
is necessary in many countries
because of the high volume of
U.S. investment in research
and development in this
sector. The protection of
intellectual property rights (IPR)
has become a top priority for
many U.S. companies operating
or selling outside of the
United States. The following
is a primer that establishes
the basics of filing a
trademark virtually anywhere
in the world. This article
should not be relied upon in
place of legal counsel.
Filing a
Trademark Application
The process
for filing a trademark
application in many other
countries is very similar to
that in the U.S. Most
applicants seek representation
by a local intellectual
property lawyer for legal
advice, and also to have the
required local contact address
on the application. Usually,
contacting a foreign attorney
or law firm directly is
unnecessary. Rather, finding a
U.S. law firm with an existing
arrangement in the country in
which you are seeking to
register is the least
expensive way to find the
right IPR representative, lf
you prefer to find a foreign
firm directly, the Department
of Commerce U.S. and Foreign
Commercial Service maintains
lists of law firms that can be
requested by fax or email.
Costs for
filing a single class
trademark application vary,
but usually range from $800 -
$2,000 for a smooth filing
with few obstacles to
publication and registration.
A U.S.-based attorney in
conjunction with foreign
counsel will give you a
clearer idea of the costs
associated with your
particular trademark. To
minimize your costs, be
prepared to answer some
specific questions. For
starters, have in mind the
range of products or services
you wish to use the trademark
with and a good idea of what
you want the trademark to look
like. If you already have a
trademark that is registered
in the U.S. you will need to
provide a copy of thc
originally filed application
to your lawyer. If you already
use the trademark but have not
filed for registration, know
the date of the first sale. In
addition, if there is a design
element to your mark, have the
image on a transferable
medium, such as a disk.
Keeping Your Costs Low
Most
important to cutting costs is
to have some idea whether you
are the only user of the
proposed trademark. In fact,
the most common but easily
avoidable legal obstacle is
when someone else has
previously filed for, or
holds, a registration to the
same mark as yours for the
same or similar goods or
services. To aid your attorney
you can easily conduct what is
called a "common
law" search by searching
the U.S. Patent and Trademark
Office (USPTO) online
trademark database (http://www.uspto.gov
), surfing the Internet,
checking phone books, trade
journals and other product
listings, such as the Thomas
Register. Tell your attorney
of any findings and be
prepared to assist in further
investigation of these
potentially similar marks to
keep your costs lower.
The Filing Process
The
trademark application process
begins by filing with the
appropriate government
authority. The process is
called "prosecuting a
trademark" and entails
communication between the
trademark authority and your
representatives. Following the
filing, the application is
reviewed by an examiner. Once
the examiner finds that the
application has no defects, or
all defects have been properly
addressed, the application is
passed to publication. It is
rare for a trademark
application to have no
defects. If defects are found,
the examiner issues an
official report or
"action" to the
attorney of record detailing
the defects and statutory
deadline for response. In many
countries, an examiner is
obliged by law to issue at
least two actions before
making a rejection final. When
the corrective actions are not
sufficient and the rejection
by the examiner is made final,
only an appeal will get the
mark reviewed again.
However, if
all defects are resolved then
the application is passed to
publication, which can take
several months. Depending on
the country, the mark is
published in the official
trademark reporter to allow a
time period for the public to
submit comments. If comments
concerning your mark are
received, they will be
considered before the mark can
continue. If the mark passes
publication unscathed, it will
move on to registration.
Once
registered, the mark can be
safely marked as registered by
using the registration symbol
or the ®, as a superscript to
your mark. This demarcation
gives notice to the world that
you are rightfully using the
word, phrase or design as a
lawful trademark for the goods
or services to which it is
attached.
Maintaining
Your Trademark
Continued
maintenance of your trademark
registration is an important
responsibility of trademark
ownership. Many countries have
requirements for maintaining a
trademark registration.
Careful attention should be
paid to deadlines for such
filings, as the dates differ
from jurisdiction to
jurisdiction.
Many
businesses not only maintain
the registration of their
trademarks in use, but also
actively protect their marks
from improper use by other
entities. These trademark
owners dc) so by hiring law
firms or "trademark
watch" firms to ensure
that no one except authorized
users are using their
trademarks in conjunction with
certain goods and services. ·
Contact Information:
For more
information on U.S. lawyers
and law firms, go to the
American Bar Association
website at www.abanet.org
and click on 'General Public
Resources or refer to your
phone book for the Bar
Association in your respective
city or state. You
should also contact the local
bar association.
Jaylene M. Sarracino is a
U.S. attorney living in
Israel. She is a former
Trademark Examiner with the
Department of Commerce, U.S.
Patent and Trademark Office
and has consulted for Israeli
law firms.
Useful websites:
For additional information
on trademarks and their
implication on international
business, please contact your
local office of the US
Commercial Service, US
Department of Commerce at http://www.export.gov/comm_svc/eac.html.
Date Updated: October 03, 2008
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