Benjamin Appelbaum, Attorney at Law

Why companies may want to file an international trademark

Some New Jersey entrepreneurs and business owner might want to consider filing an international trademark. This may not only be necessary if the company is operating outside of the United States. Protection may be needed for any company with some degree of online exposure.

This protects the company from overseas counterfeiters and cybersquatters, but filing can be time-consuming and tedious. However, the international treaty informally known as the Madrid Protocol allows a company to file an application with the World Intellectual Property Organization that covers trademarks in all the countries that have signed onto the treaty. Unfortunately, this only includes 90 countries. Individual filings must be made for other countries, including most of South America and the Middle East.

International filings should be made as soon as possible after filing with the United States Patent and Trademark Office. Many other countries do not offer the protection of granting the trademark to the first company that uses it. Instead, who owns the trademark is determined by who files first. However, deciding where to file can be overwhelming. Business owners may want to prioritize countries where the company is doing business, where the company plans to do business in the future, and where counterfeits are most likely to happen. An attorney may be able to assist a business owner in developing a strategy to protect the trademark internationally.

An attorney could also help a business owner with other elements of trademark protection. The attorney could explain the process and recommend a course of action if a company's trademark is violated. In some cases, notifying the company that is misusing the trademark is sufficient to make the violation stop, but litigation is often necessary.

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Benjamin Appelbaum, Attorney at Law - Intellectual Property

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