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Small Business Primer to Filing for Trademarks in a Foreign Country
 

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By Jaylene M. Sarracino

Practically anyone can file for and own a registered trademark for just about every good or service imaginable. Even individuals or small businesses with the need to use only one trademark (name brand, design, logo, slogan or combination thereof) can benefit from the protection that registration offers. A registered trademark provides public notice as to the origin and source of a product or service offers legal protection for creative efforts and most importantly, establishes a property interest.

Filing in the U.S. is still the first choice among most businesses; however, filing abroad is a smart undertaking for those that sell their goods or services outside of the U.S. For instance, the protection of trademarks for software and electronic goods and services is necessary in many countries because of the high volume of U.S. investment in research and development in this sector. The protection of intellectual property rights (IPR) has become a top priority for many U.S. companies operating or selling outside of the United States. The following is a primer that establishes the basics of filing a trademark virtually anywhere in the world. This article should not be relied upon in place of legal counsel.

Filing a Trademark Application

The process for filing a trademark application in many other countries is very similar to that in the U. S. Most applicants seek representation by a local intellectual property lawyer for legal advice, and also to have the required local contact address on the application. Usually, contacting a foreign attorney or law firm directly is unnecessary. Rather, finding a U.S. law firm with an existing arrangement in the country in which you are seeking to register is the least expensive way to find the right IPR representative. If you prefer to find a foreign firm directly, the Department of Commerce U.S. and Foreign Commercial Service maintains lists of law firms that can be requested by fax or email.

Costs for filing a single class trademark application vary, but usually range from $800 - $2,000 for a smooth filing with few obstacles to publication and registration. A U.S.-based attorney in conjunction with foreign counsel will give you a clearer idea of the costs associated with your particular trademark. To minimize your costs, be prepared to answer some specific questions. For starters, have in mind the range of products or services you wish to use the trademark with and a good idea of what you want the trademark to look like. If you already have a trademark that is registered in the U. S. you will need to provide a copy of the originally filed application to your lawyer. If you already use the trademark but have not filed for registration, know the date of the first sale. In addition, if there is a design element to your mark, have the image on a transferable medium, such as a disk.

Keeping Your Costs Low

Most important to cutting costs is to have some idea whether you are the only user of the proposed trademark. In fact, the most common but easily avoidable legal obstacle is when someone else has previously filed for, or holds, a registration to the same mark as yours for the same or similar goods or services. To aid your attorney you can easily conduct what is called a "common law" search by searching the U. S. Patent and Trademark Office (USPTO) online trademark database (www.uspto.gov), surfing the Internet, checking phone books, trade journals and other product listings, such as the Thomas Register. Tell your attorney of any findings and be prepared to assist in further investigation of these potentially similar marks to keep your costs lower.

The Filing Process

The trademark application process begins by filing with the appropriate government authority. The process is called "prosecuting a trademark" and entails communication between the trademark authority and your representatives. Following the filing, the application is reviewed by an examiner. Once the examiner finds that the application has no defects, or all defects have been properly addressed, the application is passed to publication. It is rare for a trademark application to have no defects. If defects are found, the examiner issues an official report or "action" to the attorney of record detailing the defects and statutory deadline for response. In many countries, an examiner is obliged by law to issue at least two actions before making a rejection final. When the corrective actions are not sufficient and the rejection by the examiner is made final, only an appeal will get the mark reviewed again.

However, if all defects are resolved then the application is passed to publication, which can take several months. Depending on the country, the mark is published in the official trademark reporter to allow a time period for the public to submit comments. If comments concerning your mark are received, they will be considered before the mark can continue. If the mark passes publication unscathed, it will move on to registration.

Once registered, the mark can be safely marked as registered by using the registration symbol or the ®, as a superscript to your mark. This demarcation gives notice to the world that you are rightfully using the word, phrase or design as a lawful trademark for the goods or services to which it is attached.

Maintaining Your Trademark

Continued maintenance of your trademark registration is an important responsibility of trademark ownership. Many countries have requirements for maintaining a trademark registration. Careful attention should be paid to deadlines for such filings, as the dates differ from jurisdiction to jurisdiction.

Many businesses not only maintain the registration of their trademarks in use, but also actively protect their marks from improper use by other entities. These trademark owners do so by hiring law firms or "trademark watch" firms to ensure that no one except authorized users are using their trademarks in conjunction with certain goods and services.

For more information on U. S. lawyers and law firms, go to the American Bar Association website at www.abanet.org and click on "General Public Resources" or refer to your phone book for the Bar Association in our respective city or state.

Jaylene M. Sarracino is a U. S. attorney living in Israel. She is a former Trademark Examiner with the Department of Commerce, U. S. Patent and Trademark Office and has consulted for Israeli law firms.

Useful Websites:

www.usatrade.gov/website/ccg.nsf -- Department of Commerce, Country Commercial Guides

www.uspto.gov/web/menu/other.html -- Department of Commerce, Patent and Trademark Office, Related Websites

www.wipo.org -- World Intellectual Property Organization


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