Trademarks like patents provide coverage on a territorial basis, thus if your commercialization plans include foreign countries, you should obtain trademark registration in those countries.
Priority Relationship between U.S. Mark and Foreign Mark
It is very important that if you do decide that your commercialization plans are international that your mark registrations for the U.S. and foreign are within the 6 month priority attachment allowed under the Paris Convention, for member countries, in that is a U.S. filing date could be used as the priority date for a foreign country if you file in the foreign country within 6 months of your U.S. filing date.
A risk of a delayed foreign filing, besides not getting your mark is that if you wait for years between your U.S. mark filing and foreign mark filing, and you have a “Famous Mark” in the U.S., the inability to obtain a foreign mark that is identical to your U.S. mark would mean that all your promotional work in the U.S. is wasted as your U.S. registered mark would be unprotected in the foreign countries you desire protection in. This leaves you with two undesirable choices; either go to a new mark for the foreign countries that can be registered in the foreign countries with the problem of establishing a new mark and possible consumer confusion. Or risk that someone in the foreign country will “register” your famous mark in their home country before you get around to it (assuming your mark will register in that foreign country) and hold “your” mark hostage for you to buy it back.
Thus, it is always prudent to register your mark at or near the same time for all countries that your commercialization plans call for, that way your mark stays yours and it is the same mark in all the countries that are important to your goods or services.
Foreign Trademark Registration Rules Generally Tougher than the U.S.
Also remember that most foreign countries only recognize filed trademarks and have no common law rights. Foreign countries can have a more stringent approval system for marks than the U.S., as most don’t allow surnames, or even semi descriptive marks. Thus you could be left in the situation where you have a U.S. mark that cannot be approved in a foreign country.
Most foreign countries are a “first to file” priority that precludes the United States based common law rights that are given to a locality or region of U.S. trademark use. Thus, without common law rights for trademarks the first to register the trademark has the priority period in most foreign countries. This is simpler administratively and certainly simpler for prior art searching for existing marks, as the U.S. common law system requires a complicated search to find unregistered marks that are in use. However, it places the up most importance on filing.
The foreign filing requires “use“ of the mark same as the U.S., however you do have more time to use the mark in most cases no later than 5 years after registration, as compared to the U.S. at a maximum of 3 years for use after notice of allowance.
Another consideration are cultural and language differences of various countries which can cause a particular mark to be offensive or become illogical, this is called a “connotation check” which further narrows the scope of an acceptable mark along with the difficulty of registering a semi-descriptive mark in the foreign country.
Foreign Trademark Estimated Costs
Can be found under the “Frequently Asked Questions” (FAQ) page under “Trademarks”.
Methods to Obtain International Trademark Protection
File individually in specific countries where protection is desired, this is called “national filing”, and will require the use of a local agent in that country.
File under the “Alicante” Spain agreement otherwise known as the Office for Harmonization in the International Market (OHIM) as a blanket organization for the 15 European Union (EU) countries for trademark filing. It is typically more economical to file under this agreement than individual country “national filings” if you want to file in more than more than 3 European countries. What the “Alicante” agreement gives you is a file date in all 15 EU countries at once, you only have to “use “ your trademark in one of the EU countries to satisfy the use requirements, however you are subject to the strict European examination and opposition procedures previously mentioned.
The Madrid Agreement and Madrid Protocol are actually two related agreements that cover trademark registration in their member countries of which the U.S is a member of the Madrid Protocol, however, these agreements have wider foreign country membership than the “Alicante” agreement, with the Madrid Protocol having the widest foreign country membership. However, none of these agreements have every country as members, thus individual country trademark national filings may still be required.