The Top 5 Reasons to Consider Foreign Trademark Registration
Every year, more and more alcohol beverage producers are sending their products outside the U.S. Consumers around the world are getting a taste for Northeast IPAs, Kentucky Bourbons, California wines, and the other world-class alcohol beverages U.S. producers are making. Here are the top 5 reasons why brand owners that are considering going international should first consider obtaining foreign trademark registrations.
1. Trademarks are country specific
Even if you have developed a famous brand, and gone through the registration process in the U.S., your rights won’t extend beyond the U.S. border. If you plan to expand into Mexico, Canada, Europe, China, Japan, or elsewhere, you should first consider applying for trademark registration in those countries.
2. If you don’t file, someone else might do it first
The U.S. is unique in that it requires that an applicant show use in order to successfully register a mark. Most other countries don’t have that requirement. This means that it is easier for others to grab rights to your mark in many other countries.
3. Avoid getting blocked at customs
Many countries allow a trademark registrant to record the trademark at the customs office, in an attempt to block knock-offs (or grey market importers) from getting into those countries. If someone else obtains trademark rights in another country and they record their rights at that country’s customs office, it may be your product that ends up getting blocked at the border.
4. The Madrid Protocol allows you to apply for trademark protection in several countries at once
There are currently around 100 countries that permit the filing of trademark applications through the Madrid Protocol (here is an updated list). While this can be expensive on the front-end, it is actually much more cost-effective now than it has ever been to develop an international trademark portfolio.
5. Trademark registrations will set your business partners at ease
Check the indemnification clause of your distribution agreement. Most of you have already promised to protect your wholesaler from trademark-related liability. If you are the owner of trademark registrations for your brands in a country you are shipping to, your importer in that country will have peace of mind knowing that you have been proactive about securing rights in your brand, and helping to avoid potential trademark disputes down the road.
For more information on this topic, contact Dan Christopherson.