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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