The rules are very different abroad.

In most countries (generally those that were not historically colonies of England), trademark rights are acquired by registration, not by use. This is very different than in the U.S., where trademark rights arise simply from offering goods or services under the mark. Consequently, foreign trademark protection requires better planning.

Trademark law is not standardized or centrally administered throughout the world. Each foreign country has its own trademark laws and trademark office which registers marks. Therefore, with few exceptions, a trademark must be separately protected in each country.

Selecting and searching worldwide trademarks.

Watch out for unintended foreign language meanings to any marks you are considering for use in foreign countries.

As is the case with U.S. trademark practice, it is usually wise to carefully search for conflicting trademarks before adopting or registering a mark abroad.

Today such worldwide searches can be performed in less than 48 hours and at a reasonable cost. A comprehensive search and written opinion interpreting that search can be obtained from a trademark specialist in any country. Email us at info@iph2.com for cost estimates.

Develop a multi-tiered trademark registration plan.

Outside the U.S., the UAE, the United Kingdom and some former British colonies, trademark use alone seldom yields enforceable trademark rights. In most foreign countries, it is the act of registering a trademark, not using a mark, that establishes trademark rights. For that reason, foreign trademark registration should be the early focus of any trademark protection program.

U.S. exporters should register their trademarks in those foreign markets where the U.S. company fills orders for customers or where the U.S. company is planning to expand distribution of its goods abroad. Think of it as "planting the flag."

With more than 200 countries maintaining their own trademark offices in the world today, most companies must prioritize their registration efforts and first "plant their flag" where it is most important to do so.

To maximize the effectiveness of those efforts and to manage the expenses associated with foreign trademark registration, U.S. exporters should first be concerned about protecting their trademarks in those countries in which the U.S. exporters' goods are or soon will be distributed. For companies exporting into numerous countries, protection efforts may need to proceed in stages to control costs, starting in the countries representing the exporters' biggest markets or potential markets.

Next, U.S. exporters should concern themselves with the foreign countries where they have vendors or suppliers. Later, U.S. exporters should address those countries particularly known to have trademark counterfeiting or pirating problems.

In making a plan, U.S. exporters should get advice on the available alternatives for protecting U.S. trademarks in those countries. For example, many countries in Western Europe provide regional trademark protection through the "Community Trade Mark" or CTM. Established on April 1, 1996, the CTM is part of a uniform trademark law that covers the twenty-seven countries in the European Union, also known as the EU.

The CTM registration system does not replace the national trademark laws of the EU member countries. Rather, the CTM is a top layer of trademark law that allows a trademark to be registered in one place and become effective in all EU countries.

For companies with foreign subsidiaries formed under the laws of a country that is a signatory to the Madrid Protocol (at present 72 countries), consider filing an international registration at the World Intellectual Property Office (WIPO) in Geneva, Switzerland, as permitted by the Madrid Protocol. Such an approach can, with a single filing, secure a priority date in other Madrid Protocol signatory countries that have been designated by the applicant. However, because this system also requires that the subsequent filings of national registrations to enforce these rights, the Madrid system may not provide cost savings in the long run.

File applications as soon as possible.

Once a search has been performed, a U.S. exporter should file its foreign trademark applications as soon as possible.

Prompt filing of foreign trademark applications is important because filing establishes the priority of the trademark. Thus, even if the registration is issued four years after the application is filed, the priority date is the date of filing. Also remember that the filing date of an identical U.S. application can be asserted as the priority date of most foreign applications if the foreign application is made within six months of the U.S. filing.

Prompt foreign registration becomes urgent as a U.S. trademark's brand notoriety increases. Trademark pirates file speculative foreign applications on up-and-coming U.S. brands hoping that one day the U.S. company will seek to sell its goods in that foreign country. Unless the U.S. exporter has already filed an application to register its trademark in the country, the U.S. company will have to either purchase the foreign rights to its own trademark or license its use where the pirate holds the registration.

Generally, foreign trademark applications can be filed within one to three weeks, depending upon the country involved. Often applications can be filed even more quickly and proper powers of attorney or specimen samples of the mark can be submitted later.

Document your use in each foreign country.

Trademark rights take maintenance. They can be lost, even if the mark is registered.

The rules differ by country, but the general rule is that failing to use a trademark in connection with the intended goods or services for three years (or in some countries five years) will cause the trademark registration to become vulnerable to cancellation for non-use.

U.S. exporters who succeed in obtaining foreign registrations for their U.S. trademarks should find out from their lawyers what it takes to maintain those registrations and avoid any lapse for non-use.

Consistently enforce your foreign rights.

Even if it's used and registered, a trademark can lose its value (and even its strength) through infringement. Trademark rights are lost also when the quality and nature of the goods sold under the mark are not inspected and controlled by the trademark owner or when someone else is allowed to use the identical or confusingly similar trademark for the same or related goods or services.

To prevent that trademark loss, know who is using the trademark and how.

The key to simplifying trademark policing is to define the boundaries of your trademark rights, both in terms of the similarity of goods, the marks that will be tolerated as non-infringing, and the geographic scope of those rights. We think of it as defining our client's "trademark ranch."

A well defined "trademark ranch" helps identify trademark violators quickly and is essential to consistent enforcement. So push your trademark lawyer to articulate the likely boundaries to your trademark rights. Once that boundary is clarified, any licensee who abuses the trademark, or any third party who uses a mark that is too similar without authorization, and thus trespasses within your "trademark ranch," can be stopped before the distinctiveness and the value of your mark is jeopardized.

A useful tool in watching the "ranch" for trespassers is a worldwide trademark watching service. Whenever a suspect mark is published in one of more than 200 trademark registries around the world, the watching service will sound an alarm, alerting the trademark owner to the problem, usually in time to oppose the pending registration application and take other legal action.