A trademark is a "brand name" for your business, containing a short phrase and usually a logo that sets your company apart from others. A service mark functions the same way as a trademark, for a service business. However, if you do business internationally, you may decide it's a good idea to register your trademark or service mark through the international trademark registration service.
If you have created a trademark or service mark for your business, you should register that mark in the U.S. Failure to register or keep your mark registered can leave it vulnerable to appropriation by companies whose only interests are often to exploit you in your desire to get it back.
- Searching the trademark database to be sure no one else is using it
- Filing the mark online, and
- Paying the registration fee
Registering Your Trademark Internationally
The U.S. Patent and Trademark Office states:
Since the rights granted by a U.S. patent extend only throughout the territory of the United States and have no effect in a foreign country, an inventor who wishes patent protection in other countries must apply for a patent in each of the other countries or in regional patent offices.
Registering in every country is an almost impossible task—especially if you are doing business online. It is difficult to know ahead of time which countries the people shopping at your site come from. Having said that, though, there are ways to register your trademark internationally without having to go through the process of registering with individual countries.
When You Need to Use International Registration
International registration is not a requirement. If all of your customers come from the U.S., it's probably not worth your time and money to register internationally. But if you sell online, your trademarked products or services are available—at least viewable—internationally. So, international registration is a good idea. Doing business in other countries outside the U.S. means you should probably use the international trademark registration process.
The International Trademark Registration Process
The international trademark registration system is called the Madrid system or Madrid Protocol. It is administered by the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland.
The Madrid system allows you to have a trademark protected in several countries by filing an application directly with your own member country and the U.S. is a member. The international mark registered with the U.S. is equivalent to an application or a registration of the same mark in countries you designate. The trademark office of the designated country must allow the protection of the mark.
The Madrid system also simplifies management of your trademark or service mark, since changes or renewals of the registration can be recorded directly, without making those changes in each country of registration. You can also designate registrations in additional countries through the Madrid process.
How to Register a Trademark Internationally
An international application may be filed electronically using the U. S. Trademark and Patent Office Trademark Electronic Application System for International Applications (TEASi) or you can use a paper form. The USPTO certification fee through the TEASi system is $100 for single class registration or $150 when the international registration is based on more than one U.S. basic application or registration.
Registering Your Trademark in the European Union
If you primarily do business in the European Union (EU) you might consider registering with the EU Intellectual Property Office. You can register your trademark online and the registration lasts 10 years, with indefinite renewals. They have two trademark registration processes, a regular and a "fast track," with information on both.
Using an Attorney for Trademark Registration
Whether you are registering your trademark only in the U.S. or internationally as well, the guidance of an intellectual property attorney will help assure all details are attended and the path is laid smooth for your trademark. Without an attorney, you can find yourself paying a lot of money, only to have your trademark application rejected.
Registration isn't protection. You must search for violators and use legal means to stop them.
Just because you have registered your trademark, that doesn't mean you can sit back and not worry about anyone stealing it. The registration gives you the right to take someone to court for violating your trademark, but it doesn't protect you from people trying to steal your trademark.
You must actively work to protect your trademark and other digital assets such as apps from being stolen. If you let others use your trademark, you are essentially giving up ownership. So, you must keep on the lookout for others who might use it, and get the help of an attorney to send a cease and desist letters and use other means for correction.