International Trademarks and the Madrid Protocol

Protecting your logo and so on with a trademark is a smart move. Ah, but what about protecting it in the United States AND internationally?

Filling for a trademark is a smart move for practically any business. Although the process can be lengthy, the final approval gives you the ability to stop competitors from using your mark to confuse consumers and perhaps steal them.

To obtain a trademark, one has to file an application with the Patent and Trademark Office. The application sets out the areas, known as classes, you wish the mark to apply to. Once the ?PTO? approves your application, it is published for comment. Assuming no objections are raised, your trademark is approved. It is important to understand, however, the mark only applies to the United States.

If you want to gain international protection for your trademark, you need to understand the Madrid Protocol. The protocol was created to deal with problems where two marks were registered in different countries and conflicts then resulted. The idea is to create a clearinghouse where a trademark in one country automatically applies to the other countries signing on to the Protocol. The United States signed on to the Madrid Protocol in 2003. 80 others have signed on as well, including most major economic countries.

To apply for an international trademark, one files a form with the Patent and Trademark Office. The application must perfectly match the national mark you are seeking. Once filed, it is forwarded by the Patent and Trademark Office to the International Bureau in Switzerland where the application is run against an international database and approved or rejected.

The cost for filing the international application is $100 per class you wish the mark to apply to, although there are exceptions where $150 is the cost. If approved, the registration will last for a period of 10 years. You can renew the registration for subsequent 10 year periods as necessary.

Filing an international trademark is a smart move if you envision your business entering international transactions. A question of cost effectiveness, however, certainly needs to be considered for most small businesses. Simply put, your money may be spent more effectively in other areas.

Richard A. Chapo is with SanDiegoBusinessLawFirm.com - providing trademark registration services.

The Role of Trademarks

Once you start conducting business, you are going to start running into the topic of intellectual property and trademarks. Understanding the role of a trademark will help you grasp why they are important.

A trademark is a unique form of intellectual property. Most intellectual property is created to protect the person or business creating it. A patent, for example, is designed to protect the inventor from having other parties use it without consent. Copyright works much the same way. A person who writes a hit song should receive compensation from it and copyright is designed to protect the person in this regard.

A trademark is unique because it performs two purposes. The first is similar to patents and copyrights. A trademark is a way for a person or business to protect a logo, etc., from the misuse by others. In truth, this is pretty much the underlying idea of most intellectual property. The only time a protected intellectual property right can be legally infringed upon is if the infringer pays a royalty or licensing fee for the right to use it.

Trademarks, however, also serve a secondary purpose. This purpose has its basis in something called public policy. Throughout the law, you will find guidelines that are set forth as a matter of public policy. These guidelines essentially are designed to help the general pool of consumers in some way.

With trademarks, there is a strong public policy supporting their establishment. The policy has to do with consumer confusion and the quality of products or services. When a consumer sees a trademark, they associate a company and level of quality with that mark. For instance, a person associates a certain cola drink with the ?Coca Cola? trademark.

When a trademark is allegedly infringed upon, the court will evaluate the issue of whether the alleged infringement is such that it is likely to confuse consumers. If it is, then a ruling of infringement is more like. For instance, assume Reebok started selling a sneaker that had a swoosh similar to Nike. The swoosh, however, was vertical instead of horizontal. Nike would certainly file suit for trademark infringement claiming that the Reebok swoosh created confusion among consumers. It would also win!

When considering whether to trademark your logo, etc., you need to evaluate how it helps consumers identify with your product or service. The more distinct your mark, the better chance you have of both being approved for a trademark and then defending it against competitors.

Richard A. Chapo is a trademark lawyer with SanDiegoBusinessLawFirm.com