International Trademark Protection

Arts + Business + International + Media + Practice + Tech
July 3, 2013
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I was approached to secure a trademark for a foreign web-based service that raised over 750% of its goal on a fundraising platform. Because the US would be its largest market of users the group particularly sought registration with the USPTO. Foreign nationals can access USPTO registration processes, but under 15 U.S.C. §1141a to extend that basic registration out to a contracting party of the Madrid Protocol with an international registration one must be a qualified owner of the basic registration, which would mean US nationality, or US domicile, or having a real and effective industrial or commercial establishment in the US. This language also appears at Article 2(1) of the Protocol, and all of this stems from the Paris Convention and the Madrid Agreement Concerning the International Registration of Marks.

Why would one start in the US and extend back to their domestic market instead of vice versa? One reason could be that the US has stringent standards. If it’s the primary market, and thus an important one for IP protection, filing the basic registration with a less exacting office could lead to a notification of refusal from the USPTO up to 18 months after the basic filing. Also, the extended registration is tied to the basic registration for five years, so if anything goes wrong domestically during that window the US extension falls coordinately. If the US market is the end game, perhaps it is more prudent then to secure independent protection and extend out from there.

But does a web-based service with no employees, no office, and no tangible assets in the US have a real and effective industrial or commercial establishment in the US simply because its primary user base is located there? Probably not. The Trademark Manual of Examining Procedure requires an address at 1902.02(j). Rather than test this question and attempt to bring these concepts into line with modern virtual and borderless practices, or pay two counselors in two markets to file with two offices, the group filed domestically with intention to extend back to the US.

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Media + Arts + Tech

Attributes

I am native to media, arts and tech – as a former touring musician, as one who can and does code, and as a maker fluent in design and multimedia content development (audio, video, photo, graphic, analog, textual). This overlap of niche and background allows me to efficiently and peerlessly integrate legal and creative for clients working in expressive spaces.

Corporate

They are called organizations for good reason. Getting and staying documented, well-papered, compliant, and aligned with pragmatic protocols is prime among best practices. General counsel and correct governance are as important to closely-held companies as they are to those seeking or deploying external funding. There are few investments more sound than a solid foundation.

Contracting

Optimizing a deal requires focussed and technical drafting. What multiple collaborators have in mind when they begin does not automatically manifest when a concept is translated into the physical world. Get ahead of junctures, pivots and transitions. Reflecting on the page what is intended at heart is the ultimate efficiency.

Copyright

There are few disciplines as relevant and fluid as copyright. The media space has enjoyed rapid development over recent decades. Law is not always so quick to follow. Navigating ownership of content is a primary concern for creative enterprises.

Trademark

Impact and impression are salable and demand attention, from protecting to capitalizing. Define your brand, put on a search, definitively document, and enforce with intent – or share, collaborate and cross-pollinate.

Trade Secrets

Assets come in variegated forms – not always capitally quantifiable or neatly captured by intellectual property regimes. But proprietary information can be of principal, or even singular value. Safeguard, manage and leverage such resources prudently and productively.

Licensing

One of the most important tools in the kit of creative profit is the flexibility and extensibility that adept licensing affords. Do it well – do it right.

Regulatory

Interfacing with public agencies is a vastly different experience than cutting deals in the private sector. Conventions, ethics, regulations, policy, and sinuous procedure need not block your path forward. Additionally, the First Amendment was written for you – stand on it.

Litigation

There will almost certainly come a time when dispute crops up and grows entrenched, or rights and obligations are transgressed or ignored. Less talk, more action – bring deft advocacy and mastery of process into play.

Strategic

Creation is nothing if uninspired. Your vocation is to deploy vision and bridge the gap between what is known and unknown, what is possible and impossible. Apply the very same foresight to your company and your career. Chance favors the prepared mind.