Four IP Tips For Expanding Your Business Globally
Crystal Broughan, Intellectual Property Attorney Aug 8, 2019 in Intellectual Property
Are you ready to take your business to international markets?
This is exciting, but it can also feel daunting. Introducing your business to markets in other countries opens the door for many potential problems — including intellectual property theft.
Trademark and copyright registrations can protect your business trademarks and original works, but only if you maintain them properly and are willing to actively enforce your intellectual property rights.
Use these tips to expand your business with the protection of trademarks.
Start with the United States
If you have not already applied for a trademark registration in the United States, do that first. You will need a pending trademark application or registered trademark with the United States Patent and Trademark Office (USPTO) before you expand into global markets. You will also gain valuable protection domestically.
For your original works (i.e. books, music, plays, lyrics, paintings, software code) make sure you obtain a copyright registration in the United States for each original work.
Do Your Research
Applying for a trademark registration in every country is not necessary if you only want to expand in specific markets. Before you take the time to expand, ask yourself why you are expanding. Where do you want to expand, and how will this help your business grow?
Once you come up with a plan, it is time to do your research. First, make sure that your trademark is not already being used and/or registered in the countries you have selected. A trademark clearance search through the World Intellectual Property Organization (WIPO) Global Database is one way to see what trademarks are registered through WIPO and in other countries.
Then learn a bit about trademark laws in those countries. Just because you have a unique name in the United States does not mean that you will not be violating trademark laws when you begin to expand.
Consider if you should continue to use the English version of your trademark or translate it into the primary language of the foreign markets. Would any of the words in your trademark be considered offensive in the country in which you are expanding?
Also, will your US Copyright registrations be honored in the country that you are expanding into? Or do you need to obtain a copyright registration in that country for your original works?
Apply Using the Madrid System
Once you have determined that there are no obstacles in your way, it is time to apply for a trademark. Luckily, some countries made it easy to submit a single application that registers a trademark in multiple countries using the Madrid Protocol.
The Madrid Protocol “provides a cost-effective and efficient way for trademark holders — individuals and businesses — to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees in one currency.”
At this time, one hundred and four countries are part of the Madrid Protocol, including China, Russia, the EU, and Mexico.
Trademark owners can fill out an application on the USPTO website, provided they have already applied for or obtained a trademark registration in the United States. Once the international application is approved by the USPTO, they will forward it to the International Bureau for the World Intellectual Property Organization (WIPO).
The International Bureau will either deny the application or issue an international registration. They will then forward the international registration to the country in which you want to register your trademark. That country will then either grant or deny you permission to use the mark in that country. If permission is denied, you will need an attorney in that country who knows how to respond to the denial.
Unfortunately, not every country allows you to register your trademarks through the Madrid Protocol. Many countries in Africa are not members of the Madrid Protocol.
If you want to expand your business to markets that require you use a local attorney or agent to file trademark applications, I recommend you reach out to an intellectual property attorney for information on how to secure a trademark registration in those countries. Many but not all trademark lawyers are members of the International Trademark Association and have contacts in many different countries that can help with both trademark and copyright law issues.
Learn the Rules for Maintaining Your Trademark
If you have a registered trademark in the United States, you will have to renew your registration every ten years. Trademarks filed through the Madrid System are also subject to specific maintenance requirements. Learn what the rules are in the various locations you want to expand.
Joining the global marketplace can be a huge growth opportunity for your business. However, it requires solid preparation and knowledge on how to protect your trademarks and copyrights. Work closely with an IP attorney to learn more about this process and how to properly expand your business without running into any bumps in the road.Share