I would like to register by trademark but I would like to know if I register under the united states or EU, I'm protected elsewh

Asked almost 2 years ago - New York, NY

I would like to register by trademark but I would like to know if I register under the EU does that mean I'm protected in most Paris Convention members? Or is there away to register through a central source that will protect me ?

Attorney answers (3)

  1. Trina Ann Longo

    Contributor Level 12

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    Answered . Trademarks are jurisdictional, meaning, that you must file in each jurisdiction where you want to obtain protection. A trademark registration in the United States will only protect you in the United States; it will not protect you in any other country. A Community Trade Mark (CTM) will give you protection in all 27 member states of the European Union (assuming that no one with prior rights to a confusingly similar mark opposes your registration).

    Many countries are members of the Paris Convention, including countries in Asia, etc., so no, if you obtain a CTM, you will not be protected in most Paris Convention member states. The Paris Convention is useful in obtaining priority filing dates in member states based on filings in your home country, but it does not give you trademark rights automatically in other jurisdictions.

    There is a way to register through a central source. That is the Madrid System. Basically, you file a trademark application in your home country and (assuming your home country is a signatory to the Madrid Agreement or Madrid Protocol), you file an International Registration based on your home country filing. When you file the International Registration, you designate which countries / jurisdictions you would like the International Registration to be extended to. Your application will then undergo examination in each country/jurisdiction which you designated.

    In certain circumstances, filing through the Madrid system can be beneficial. In other circumstances, you are better off filing directly in each of the jurisdictions where you wish to obtain trademark protection. For this reason, you will need to hire experienced trademark counsel who can review all of the facts and circumstances of your particular situation and advise you as to what is best in your specific situation.

    Global filing projects can be very expensive. And if they are done incorrectly, you will find that you do not have all of the protections that you need. It is very important, therefore, to work with experienced counsel who can devise the best foreign filing strategy for your specific situation and execute it.

    Good luck!

    This answer is for general information purposes only. This communication does not constitute legal advice, nor... more
  2. Jason Harris Rosenblum

    Contributor Level 9

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    Answered . Trina is correct, there is no one stop shop. You have to make a business decision and think about where you will be doing business and where potential infringes may be, as it can get costly. You may wish to start with a worldwide search to see where it is available and if any similar marks are being used in any other countries. There are a number of factors that you should consider in making any such decisions it would probably be best if you speak with an attorney.

    Good Luck.

    Please note, no attorney-client relationship is created by this response. Any answer or other information posted... more
  3. Frank A. Natoli

    Pro

    Contributor Level 20

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    Answered . Hi,

    My colleague offered a very good overview. I think the first quesiton you want an answer to is where are you planning on investing in marketing, branding, adverising, etc?

    Once that is clear, you can strategize and plan your TM protection accordingly. The EU Community filing is very expensive ewven before you calculate any legal fees, but it can be a great help assuming you need that kind of coverage. If you plan on taking it one or several countries at a time and wish to use Madrid Protocol you will have to go through the office where the mark originated.

    You should consult a TM lawyer and create a best course of action. I will link you to some info below and feel free to contact me if you care to discuss in more detail.

    Best regards,
    Frank
    Natoli-Lapin, LLC
    (see Disclaimer)

    The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the... more

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