Go West (and East, North or South), Young Brand. Part 2 – Planning Ahead

We can’t take it any longer. We HAVE to tell you more about filing foreign trademark applications, if only to answer the question that we are asked the most frequently regarding it (besides “How much will it cost?”).

“Why? I only offer my products/services in the U.S.” When considering whether filing foreign trademark applications is prudent, it’s important to ask yourself not only where the business operates now, but where you plan to grow the business 3-5 years out. Attempting to expand into a foreign market, only to find that another party has registered your trademark is, at the very least, a significant inconvenience and distraction. Remember, most other countries don’t require a mark to be in use in order to be registered. In addition to any planned expansion, the following other factors should be considered when evaluating whether and where to file foreign applications:

• Where your suppliers, distributors and/or licensees are located. Would you want your foreign supplier to register your trademark and begin selling its own merchandise under it?
• Where your key customers (and competitors) are located.
• Whether any particular country is known to be the point of origin for counterfeits of your type of product.
• Whether any particular country’s economy is focused on or experiencing growth in your industry.
• If a particular country of interest has a language other than English as the primary language, should you apply to register the mark in English, in the local language, as a transliteration, and/or as a translation?

Filing in multiple jurisdictions can quickly become prohibitively expensive, however. When adopting a new trademark that has the potential to be used internationally, it is important to involve both the business and legal functions of a company (including outside trademark counsel, if needed) early on in the planning process.