For businesses operating in the United States, registering a trademark or tradename is a method of protecting your reputation and integrity within your market. Registration with the United States Patent and Trademark Office ("USPTO") provides such benefits as the right to use the ™ symbol, to file a federal infringement lawsuit, to seek attorney’s fees and treble damages, to halt the application of similar marks with the USPTO, and to serve as a basis for international applications.1 Such benefits, however, are only available within the United States, unless your business exercises the last benefit listed above and registers its trademark internationally.
International registration offers several important benefits to a business operating in an online marketplace. Primarily, it allows your business to protect its intellectual property outside the United States if it is selling its product or offering its services in more than one country. It also allows your business to enforce its trademark against foreign imposters who are intentionally operating in a foreign market to take advantage of the limited reach of United States’ trademark protection.
While foreign registration will not offer protection in every country, registration with the World Intellectual Property Organization ("WIPO") allows for application in 90 countries affiliated with the international treaty known as the Madrid Protocol.2 As noted above, federal registration within the United States can serve as a basis for international registration with WIPO. The United States registrant submits the WIPO application, which must apply the mark to the same goods as the United States application and must be for the same or a lesser scope.3
Just as a business must weigh the costs and benefits of federal trademark registration, a business should also balance the costs associated with international registration, in order to determine whether such protection is worth the investment. Clearly, businesses operating in other countries should consider international registration in those countries in which they operate; but what about United States business operating online? If your business is selling its product or service on an online marketplace to international consumers, it should inquire into the volume of business it is achieving and in which countries, in order to determine which countries, if any, it should be seeking registration. Another consideration should be the susceptibility of your product to counterfeiters or imposters and whether registration would be beneficial in countries notorious for producing such products.
We encourage businesses considering international operations to discuss the costs and benefits of international trademark registration with our attorneys. For a list of countries which accept the WIPO application, please visit the WIPO webpage at the link below.4
1.Andrew Stockment, Trademarks 101 Part 2: The Benefits of Federal Registration (August 27, 2013), https://www.americanbar.org/groups/young_lawyers/publications/the_101_201_practice_series/trademarks_101_part_2_the_benefits_of_federal_registration/.
2. Josh Gerben, International Trademark Filing Strategies: How, When & Where to File a Trademark Outside the U.S. (Jan. 14, 2019), https://www.ipwatchdog.com/2019/01/14/international-trademark-filing-strategies/id=104779/ (noting that many South American and Middle Eastern countries are not participants in the WIPO application process).