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Global Trademark Protection — 5 Practical Considerations

Bylined Articles
Sterne, Kessler, Goldstein & Fox

When Tim Berners-Lee developed the World Wide Web in 1990 as a tool to share information among specialized researchers, he likely did not anticipate the degree to which his invention would radically change — in just a few decades — how people across the globe transact business. Once a tool for military, scientists, and academia, the launch of the Commercial Internet Exchange (CIX) in 1991 and Mosaic, the public’s first graphical web browser, in 1993, made the Internet accessible to ordinary individuals and businesses. Today, the continued innovation in graphical web browsers, servers, and social communication networks has accelerated access to, and sharing of, up-to-the-minute information via the Internet for purposes ranging from altruistic to nefarious.

Given this unprecedented global connectivity, brands must consider global protection earlier in a product or business lifecycle than ever before. Businesses in even the most far-flung locales are able to sell their wares to a worldwide audience through Mr. Berners-Lee’s vision. However, this worldwide exposure and connectivity can come at a price. The threat from overseas brand pirates, cyber squatters, and counterfeiters is a very real one, and international enforcement can be difficult, particularly absent appropriate trademark registrations. Because in the majority of foreign jurisdictions, rights arise from being the first to file a trademark application, versus first to use a mark, it is always a good idea to seek protection for your marks overseas as early and as broadly as possible.

That said, it is the rare business that has the budget to protect every single mark in every single jurisdiction. Following are five factors to consider in determining how to prioritize foreign filing resources.

  1. Where to file: will you be doing business in foreign countries? If your customers, distributors, or manufacturers are located outside of the U.S., you should consider filing in the countries in which they are located.

  2. Even if none of your business relationships are with entities outside of the U.S., is yours the type of product that is frequently counterfeited, such as fashion items, electronics, and pharmaceuticals?

  3. Could counterfeit products harm your consumers? For example, counterfeit socks may not pose much of a liability if they do not perform as expected, but pharmaceuticals pose a significant risk — to consumers and to the brand.

  4. Is your mark unique and memorable? The value of well-known and distinctive marks (such as Apple, Google, Nike, and the like) is that they immediately convey cache and goodwill to consumers. If your mark is more descriptive and/or shared by many entities (i.e., INFORMATION SYSTEMS or SMART PRODUCT] it may be a less attractive target for bad actors.

  5. Would you be able to do business under a different brand, in the event you were precluded from using your brand in a particular jurisdiction in the future?

Foreign trademark protection need not be an all or nothing proposition — taking action relating to key marks in key jurisdictions can help protect brand value in future key markets.


This article appeared in the March 2015 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.