When you choose a name for a little storefront business, all you
have to worry about is whether the name will resonate with
customers and whether any similar business nearby uses the same
name. But expanding across the nation or around the world requires
an extensive trademark search to make sure no other company has
priority rights to your trade name. Under the Madrid Protocol,
which became effective in the United States on November 2, 2003,
that process became more complicated.
Karen Artz Ash, partner and chair of the intellectual property
department at Katten
Muchin Zavis Rosenman, explains that, until last November, it
wasn't possible to make a filing in the United States that
would protect your trademark in other countries. You'd have to
do a trademark search in each country, combing through its records
to see whether any other company had the rights to your name, and
then apply for trademark protection.
Now you can file for trademark protection in the United States
and designate up to 50 member countries in which you also want
protection. These include most European countries, plus China,
Cuba, Iceland, Japan, Turkey and some African countries. (Note that
Canada and Mexico have not joined the Madrid Protocol, and neither
have the countries in Central and South America.)
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The downside is that companies in member countries can do the
same thing. By one simple filing, a country overseas can garner
trademark protection in the United States for the trade name
you're using.
"It used to be that you'd first do a preliminary
search," Ash says, "then a broader, common-law
search" to find out what companies have used the name or
similar trademarks and for what products or services, and whether
any company that has let its registration slip still has common-law
rights to it in certain states. Ash adds, "It was a fairly
straightforward process."
Now, even if you only want to do business in the States, you
should check the U.S. Patent and Trademark Office (USPTO), state
databases, common-law uses, and the international registry of the
World Intellectual Property Organization (WIPO) for filings from
outside the United States that haven't yet been recorded
domestically. Ash notes that companies have two to four months
after filing to list the countries where they want protection, and
that the WIPO certification process may delay for another two
months the information reaching the USPTO registry.
Accordingly, Ash advises business owners to hire an experienced
trademark attorney to do a preliminary search on an intent-to-use
basis, then a follow-up after three to six months. If no major
problems turn up, you can do a complete search, including
common-law uses. Otherwise, your registration might be cancelled,
or you might face a costly dispute over use of the trademark.
All this costs around $2,000, and it nets you trademark
protection in all member countries. It's a big expense for a
small company, but far less expensive than a legal battle with some
company overseas-or having to start all over with a new trade
name.
Jane Easter Bahls is a writer in Rock Island, Illinois,
specializing in business and legal topics.