Tag: foreign trademark

An overview of the Madrid Protocol

Your trademark grants you protection in the country you filed it in, but what if you want to do business or expand your market into other countries? There are ways to expand your trademark’s protections. Established in 1989, the Madrid Protocol was an international treaty which established an international trademark registration filing system. The system is administered by the World Intellectual Property Organization (WIPO). The system allows applicants to register in other member countries through a single application. Obtaining an international registration through this system affords the same benefits and protections as a national registration. First a request for extension of protection is filed in the home country. Once reviewed it is sent to WIPO for another review before being sent to the designated countries. If no issues are raised by this point, then it will be sent back to the home country and published for opposition. International protection can be invaluable protection if you are planning on expanding your business abroad.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Can I obtain Federal registration for my foreign trademark?

The answer is likely yes.  The US is one of the largest markets in the world and for an expanding business it is important to ensure your protections are in place. As long as the country you are from is part of a trademark convention with the United States or is reciprocal to US citizens, you can use your foreign registration or application as a basis to file with the Federal government. The foreign filing you are using as a basis for your new US application must have been filed in your country of origin. Foreign applicants are allowed to file as long as they have an intent to use their trademark and may use the date of filing on their foreign application or registration as their date of filing on the US application. Do not forget to provide translations for all required foreign documents and it may also be a good idea to appoint a domestic representative, someone familiar with this process that will likely be foreign to you such as a licensed attorney.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What can be used as a trademark?

It is possible to use many different things as a trademark. While not an exhaustive list these are some of the most common: slogans, letters, numbers, foreign language, and designs. Slogans can be registered if they can standalone when not on a label, are not explanatory/informational, are not a familiar expression, and are not just part of a phrase. Numbers and letters can function as very good trademarks when their combinations have no recognizable meaning. If the combination is a recognizable abbreviation and descriptive of the goods, then a secondary meaning will have to be shown. Foreign language trademarks can be registered as long as their translated meaning is not a generic term. It is important to note that when determining confusion with other marks, foreign language marks will only be translated if the average person would know its meaning. Designs can be registered so long as they are not ornamental, background material, or ordinary shapes. A strong design trademark can leave a commercial impression by itself.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.