Clients often ask whether they should apply to register their trademarks outside of the United States.
A trademark registration is a valuable asset. It gives its owner the exclusive right to use its mark in connection with the goods or services covered by the registration, and the right to stop third parties from using the same or a confusingly similar mark in connection with the same or similar goods or services.
Trademark rights are national. This means that even if a mark is used and registered in the United States, its owner might not be able to stop third parties from using the same mark in connection with the same goods and services in other countries.
Because of the Internet, and vendors that assist with international shipping and payment processing, many businesses can easily promote and sell their goods and services to an international audience. Doing that may expose the business to liability for trademark infringement, if they don’t have the right to use their U.S. trademark in other countries.
In an earlier article, we discussed international filing strategies, which include filing applications in select countries using local counsel, or filing a single “international application” designating multiple countries.
Before adopting a filing strategy, a brand owner must first ask a fundamental question: should I register my trademark outside of the United States?
Whether or not a global trademark portfolio is worthwhile depends on the budget and strategy of the business. Many brands devote significant resources to registering and enforcing their trademarks in hundreds of countries around the world. On the other hand, start-ups and small businesses whose focus is sales in the U.S. might not want to devote any funds to international trademark work. There is a middle ground – businesses with a significant international customer base, or businesses that want to “clear the path” for international expansion, can develop a mindful global trademark filing strategy.
There are many benefits of owning trademark registrations outside of the U.S., including:
- trademark registrations are assets of the business;
- trademark registrations help clear the path for international expansion;
- trademark registrations give third party notice of claimed trademark rights;
- trademark registrations help clients enforce their trademark rights against infringers abroad; and
- in some countries (notably China), trademark registrations are given to the first party to file. Securing an early trademark registration cuts off the ability for pirates to register a business’ trademark.
The cost of applying to register a trademark in other countries depends on a number of factors, including:
- whether a brand owner uses local counsel in each country or files an international application;
- the number of trademarks being applied for;
- the number of countries; and
- the number of different classes of goods or services covered by the application.
In addition to the filing fees, businesses must consider attorney’s fees, costs to monitor and enforce its brand against infringers, and costs to maintain international registrations. (Typically, a trademark registration outside the United States must be renewed every 10 years.)
As an example, in November 2022, the filing fee for an international application to register 1 trademark in 1 class of goods and services in Australia, Canada, China, the European Union and the United Kingdom was about $2600. (The filing fee would increase or decrease if countries are added or subtracted to the application.) In addition to the initial filing fee, a client has to pay U.S. counsel and paralegal fees for preparing, filing and monitoring the application. And if the application receives a refusal in one or more countries, then the client would have to engage local counsel in those countries in order to assist with the prosecution of the application.
The costs would increase significantly if the client chose to engage local counsel in each country instead of filing an international application.
Developing an international filing strategy is unique to each client. We would be happy to speak with you to discuss your specific goals and needs.
