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  • Jessica Eaves Mathews

Do You Need An International Trademark?


Question: Do you need to have an international trademark? This question assumes that you already have a federal trademark either in process or fully registered. If you don’t, that is your first step. I won’t deal with why you need a federal trademark in this post, but will in a future post.

So, first, be sure that you have a federal trademark that is on the Principal Register with the USPTO (versus the Supplemental Register – your registration information can be found on your paperwork you received from the USPTO, or you can look it up on line here: http://tess2.uspto.gov/bin/gate.exe?f=searchss&state=4004:u03sqq.1.1 ).

If you do, then the most important thing to do first is record your registered trademark with US Customs. It will enable Customs to monitor imports and prevent infringing products from being imported into the US. Unless you plan to go international with sales, you don’t necessarily need trademarks in other countries.

See the link below for more on how to record your trademark with U.S. Customs & Border Protection (CBP) (a bureau of the Department of Homeland Security) http://www.uspto.gov/trademarks/notices/tmrecorduscustoms.jsp If you do sell in other countries, pursuing trademarks in the countries where you sell most is prudent. You can hire our firm to do your international applications for you, which I recommend given the complexity of the various countries’ requirements for registration.


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