Registering Trademarks Outside the United States:

A Guide for Entrepreneurs

By George Likourezos, Esq.

In a previous article, I discussed the importance of trademark registration and how to determine if a trademark or brand name has a high likelihood of being registered, such as conducting a trademark search and being able to ascertain the distinctiveness of the trademark; the more distinct, the higher the likelihood the trademark will be registered.  I will now describe how to register a trademark, brand name, slogan, and logo in countries and jurisdictions, such as the European Union.

Registering a trademark involves a process that varies from one country to another. I prepared the following general guide or step-by-step process to help you navigate through the steps:

1. Research and Choose Countries: Identify the countries where you want to register your trademark. Consider factors such as your target market, business expansion plans, and potential risks of trademark infringement.
2. Perform Trademark Search: Conduct a comprehensive trademark search in each target country to ensure that your desired trademark is not already in use or registered by another entity.
3. Engage a Trademark Attorney: It is advisable to hire an intellectual property attorney to guide you through the specific requirements and procedures. They will help you navigate the complexities of the process and advise you as to costs per country to select the countries that are most suitable for your business and budget.
4. File Application: Prepare and file a trademark application with the intellectual property office in each country where you want protection. The application should include details about your trademark, its use, and a list of goods or services associated with it.
5. Use Madrid System (Optional): Consider using the Madrid System if your target countries are members. The Madrid System allows you to file a single international application with the World Intellectual Property Organization (WIPO), which can then be extended to multiple member countries. It is advisable to have an intellectual property attorney file your trademark application through the Madrid System.
6. Local Requirements and Documentation: Be aware of and fulfill any specific requirements in each country. This may include providing evidence of use, translations of documents, and other documentation as required.
7. Examination Process: Each country’s intellectual property office will examine your application. If there are no objections or if you successfully overcome any objections, the office will approve the trademark, and often also publish the trademark for opposition before it is registered.
8. Registration and Maintenance: Once the application is approved, pay the required fees to obtain the trademark registration. Be aware of renewal requirements to maintain your trademark protection over time. An intellectual property attorney can monitor the fees due and due dates and remind you in advance to prevent an inadvertent abandonment of your registered trademark.
9. Enforcement: Monitor and enforce your trademark rights in each country. If you discover any potential infringements, work with local legal counsel to address the issue.

Remember, the process and requirements can vary significantly between countries, so seeking professional legal advice is crucial. A qualified intellectual property attorney will guide you through the specific steps and help ensure a successful registration process in each foreign jurisdiction. A resource you can consider as a business owner in protecting your brands, trademarks, logos, and innovations in the USA and worldwide is the intellectual property law firm of Carter, DeLuca & Farrell. Carter DeLuca has assisted hundreds of companies to scale and grow and protect their intellectual property (patents, trademarks, copyrights, and trade secrets).

For a free consultation made available through Spotlight Family Office Group, please contact us at Info@SpotlightFamilyOffice.com.