Why Register A Trademark Outside Of The U.S.?

International Trademark Applications
Important Information from the Lawyers at the Law Offices of Joseph C. Messina

The global economy no longer has geographic borders. It is the equivalent of an open marketplace and in the center we find the Internet. A natural consequence of this dynamic economy is a multitude of opportunities outside one’s own country. With more and more organizations taking advantage of the opportunity to offer their services and sell their goods in the international economy, international trademark protection becomes a critical component of a company’s long-term business plan. At the Law Offices of Joseph C. Messina, we advise individuals and businesses in Westchester County, New York and Stamford, Connecticut and the surrounding communities including all the boroughs of New York City, on global trademark registration programs. Our attorneys are knowledgeable and conversant with the different international treaties under which an applicant can file one trademark application and gain protection in numerous countries concurrently. This type of trademark registration program is appealing to businesses seeking to gain and protect trademark rights across the globe in a cost efficient manner.

To set up a free consultation, contact us by e-mail or call our office at 914-381-2728.

Expanding Your U.S. Trademark Rights Outside U.S. Borders and Gaining Trademark Protection Around the World

Whether you are interested in using your U.S. trademark registration or application as a basis for acquiring an International Registration and gaining protection for your Mark in multiple foreign countries, or in just one or two additional countries, filing under one of the international treaties will provide you with the intellectual property protection you are looking for while expanding your trademark portfolio. Perhaps your company is looking to conduct business in the European Union, we can help you secure trademark rights in the 27 member countries, merely by filing one single trademark application. The Law Offices of Joseph C. Messina can assist you with your international transaction and work with you and your organization, to expand your trademark rights beyond U.S. borders.

Our firm collaborates with a highly competent and professional group of foreign associates that aid and assist us in your international trademark prosecution. Discover how you can protect your trademarks and strengthen your brands, gaining product and name recognition in countries throughout the world by contacting the Law Offices of Joseph C. Messina for a consultation and a trademark portfolio evaluation.


How do I file trademark applications in foreign countries?

There are various strategies a company could employ when developing an international trademark program. Options will include filing a national application directly with each country or filing under one of the international treaties wherein you can protect your Mark in multiple countries simultaneously. We will develop a case-by-case strategic analysis based on a thorough understanding of the intricacies and limitations of each option.

Each option will have advantages and disadvantages that will have to be considered before proceeding forward. For example, if you file through the Madrid Protocol, a single language application (either English or French) allows for a ten year lifespan with a single renewal date. The initial cost of filing is also less than filing separate national applications. However, one disadvantage is that your International Registration will be dependent upon your USPTO registration or application (the home registration or application) for five years. In other words, the rights granted by an International Registration can be extinguished if its home application does not mature to registration or is abandoned or canceled in the first five years. If this occurs you can transform the international registration into a series of national applications in the designated countries, while retaining the date of the original international registration. Based on each individual client's respective circumstances, we will develop an effective foreign registration program.

You will find different trademark laws around the world. Consulting with a Trademark Specialist is critical. There are significant differences between U.S. trademark laws and the laws of other countries. For example, in most foreign countries you do not have to use the trademark before registering it, as you do in the U.S. While the U.S. requires specific detail when specifying the products and/or services used in conjunction with the Mark, many foreign countries permit a broad description of the goods/services. Since most foreign countries require a local agent or local counsel to file your application the Law Offices of Joseph C. Messina maintains a global networking group to assist us in foreign trademark filings. We will educate you on the various differences between U.S. laws and international laws at the time of your consultation.

Contact the Law Offices of Joseph C. Messina

Contact us by e-mail or call our office at 914-381-2728 to schedule a free consultation. We work with individuals and businesses in New York, Connecticut and throughout the nation.