IP Protection Tool Kits
A STRATEGIC APPROACH TO IP PROTECTION
REGISTERING YOUR TRADEMARKS: A STEP-BY-STEP GUIDE
THE THREE M’S OF TRADEMARK REGISTRATION
2.1: A STRATEGIC APPROACH TO IP PROTECTION
Intellectual property protections should be an important strategic consideration for any business, but this consideration is particularly important for SMEs. There are no one-size-fits-all solutions to brand protection challenges. Each business is unique in terms of its product offerings and market strategy, resource constraints vary by firm, and counterfeiting risks are not equally distributed. Taking a strategic approach to the development and implementation of intellectual property protection strategies means being honest about your likely exposure to risk, identifying your available resources and strategic options, and finding the most efficient and effective mix of responses available. Strategic approaches to IP protection are not a question of whether you should initiate protection but rather how soon you will initiate a strategy and what your strategy should look like.
STEP 1: Register Your Trademarks
Every brand protection strategy should begin with the registration of trademarks with the USPTO and, if relevant, foreign IP offices because registration allows you to take action. A well-developed IP strategy gives growing businesses multiple avenues through which they can expand product portfolios and find synergies across multiple activities. Importantly, having an IP strategy in place can reduce an emerging business’s exposure to litigation risk. For example, as startups begin to show growth and take market share from competitors incumbents in the market will look for ways to stifle this growth, including bringing lawsuits.24 Having a strong IP portfolio will provide startups with a way to hedge against the risk of litigation, while giving them opportunities to deter litigation through countersuits.25 The steps to register your trademarks with the USPTO are outlined in the tool kit titled Registering your Trademarks: A Step-by-Step Guide.
STEP 2: Develop a Broader Registration Strategy
Once you have registered your trademark with the USPTO, you will need to develop a broader trademark registration strategy. Trademark protections exist within jurisdictional boundaries; a U.S. trademark registration does not grant you protections in other countries. Similarly, a state-level registration in Michigan does not offer you protections under California law. Because the costs of registration grow with each added jurisdiction, it is important to be strategic about where you will register your marks. Identifying the state-level and international registrations that are most important to protecting your brand now should be your principle concern at this step. Following this, draft a list of places where you are likely to do business or into which you would like to expand your business in the future. A well-crafted IP strategy includes anticipating the markets in which you plan to operate and how best to secure IP protections in those areas.26
You must be poised to secure your trademark rights in these places as soon as possible so that you will have protections the moment you enter that market. We provide you with a process for developing this strategy in the tool kit titled The Three M’s of Trademark Registration: A Practical Guide to Developing and Maintaining a Trademark Registration Strategy. Following the drafting of this strategy, you can refer back to the tool kit on Registering your Trademarks: A Step-by-Step Guide for information about state-level and international registration processes.
STEP 3: Research Brand Protection on E-Commerce Platforms
Businesses cannot ignore the threat of product counterfeiting that exists on the Internet. Several major e-commerce platforms have become active in the fight against counterfeiters and offer SMEs unique programs to record their marks and take action against infringing goods being sold online. The section titled E-Commerce Resources outlines a number of different platform-based programs that you can take advantage of when building out your e-commerce focused brand protection strategy.
At some point, depending upon the nature of your business and how prevalent your online counterfeiting problem has become, you may want to enlist the help of a third-party service provider that specializes in online enforcement. There are a number of firms that provide online monitoring and enforcement services to brand owners. The cost of these services varies according to the extent of the provider’s involvement, the type of activities they are conducting, the amount of data that you request from them, etc. The A-CAPP Center does not endorse any particular service provider or service so we do not detail the firms and their offerings here. However, in one of the following steps – Step 5 – we discuss how you can gain valuable information about service providers and attorneys from other companies that have experience developing brand protection strategies.
Another essential component of e-commerce focused brand protection activities is developing an efficient returned goods process that allows you to evaluate any and all products returned to you as defective. Customers who have purchased a counterfeit item that failed may return the item to you believing that the item is legitimate, yet faulty. Examining these items can tell you much about the nature of the counterfeits being sold and may give you clues about the source of the goods. Yet, an efficient returned goods process will provide avenues for interaction with your customers, whereby you may be able to gain valuable information about where and how the customer purchased the item. This information may help you to identify counterfeiting problems that you have yet to detect. Similarly, providing a way for customers to report suspected counterfeit items directly to you, either via phone, email or online submission, is an excellent way to gather data about counterfeits you may not have previously identified. Additionally, these reporting channels allow you to directly interact with your customers so that you can quickly respond to problems, address their concerns, and put legitimate products in their hands.
STEP 4: Build Relationships with Law Enforcement
In the toolkit titled Registering your Trademarks: A Step-by-Step Guide, we describe the process of recording your trademarks with customs agencies. Trademark recordation with customs agencies is an essential part of enlisting the assistance of law enforcement agencies in the protection of your brand. Yet, you should view recordation as the initial step to engagement with U.S. Customs and Border Protection, one that is followed by training and interaction. U.S. CBP invites trademark holders to assist them in identifying counterfeit goods coming into the country by providing a product identification guide as an aid to distinguishing legitimate from illegitimate goods. Additionally, you can visit ports of entry personally and provide in-person training to CBP agents or set up live online trainings that will help customs agents to recognize your trademarks. Additional information about these engagement opportunities can be found here:
When you engage with CBP, be sure to provide them with up-to-date contact information as it is essential that they be able to reach you in a timely fashion should potentially infringing goods be identified.
Relatedly, you should make inroads with the National Intellectual Property Rights Coordination Center, which is the hub for IP enforcement in the U.S. The IPR Center can connect you to federal and some local law enforcement partners, offer guidance on brand protection activities that involve law enforcement agencies, and assist with the trademark recordation and CBP training processes. They also have an IP Protect Program designed specifically to help SMEs.
While most of the anti-counterfeiting activities are carried out by federal law enforcement agencies, it is still wise to investigate which agencies within your state have responsibility for investigating and addressing counterfeiting issues. The state-level trademark recordation information provided to you through this guide and the A-CAPP Center are an excellent starting point to identifying which department within your state government to contact. Additionally, contacting your state’s business development office and the entity handling exporting and trade are key steps to identifying your state-level resources.
STEP 5: Create Collaborative Brand Protection Relationships
You are not the only company in a fight against counterfeiters. Firms large and small face the threat of counterfeiting each day, and over the years we have seen a substantial amount of collaboration between firms, even those who are competitors in the marketplace. Counterfeiters are the common enemy. Luckily, as an SME you can collaborate with other firms in a brand protection partnership that will at the very least offer you insight and information that you can use to tackle counterfeiters and may at best provide you assistance in addressing your specific counterfeiting issues. In the section Other Brand Protection Resources, you will find information about industry associations and groups dedicated to combatting counterfeiting. Through this groups you will be able to meet with other companies and learn about how they have handled counterfeiters, whom they see as trusted service providers, and how they partner with other firms, e-commerce platforms and law enforcement agencies in this fight. Take advantage of opportunities to meet and interact with other companies, such as those afforded by attending the A-CAPP Center’s events, such as A Brand’s New World or the annual conferences hosted by the International Anti-Counterfeiting Coalition (IACC) or International Trademark Association (INTA). We trust that you will find the attendees as willing to share information and resources as they are eager to hear about your issues and offer guidance and suggestions.
Brand protection relationships can also come within your company’s supply and distribution relationships. While it is true that the businesses with which you partner have no responsibility to protect your intellectual property, you may find that they are very eager to assist you in your efforts. Importantly, you must remember that it is your responsibility to protect your IP – no one else has a higher duty to do so. You, as the property rights holder, have the responsibility to protect your intellectual property, even after your property has been filed as a patent, copyright or trademark right. This means that it is incumbent upon you to (1) file from appropriate intellectual property rights, (2) institute means to protect those rights through developing an intellectual property protection strategy, and (3) to ensure that any companies that do work on your behalf abide by your IP rights. Once this is done, look to engage with your upstream and downstream partners, including e-commerce platforms, in a way that makes it clear that you value them as a business partner who have the ability to help protect your intellectual property while it is in their hands. Partners in your supply and distribution chain can help to protect your IP by working to keep counterfeiters from intermingling fake goods in with your legitimate goods, thereby using legitimate products as a cover for their counterfeit products. Distributors can be your eyes and ears on the street, interacting with customers and other distribution partners to quickly identify when counterfeit goods appear in the marketplace. If you are a supplier or distributor for a larger firm, have discussions with them about how you might be able to integrate your brand protection activities with theirs, which can enhance their own anti-counterfeiting activities and reduce the brand protection burden that you have to carry.27
STEP 6: Develop an International Brand Protection Strategy
The most important reasons that you need to consider taking your brand protection strategy “international” are the Internet, and the growth of global manufacturing paired with a globally-connected supply chain. Even if you are not selling into foreign countries at this point, counterfeits of your products almost certainly originate from outside of the U.S. It may be the case that your own business is sourcing components or manufactured parts from outside of the country. Additionally, the Internet and the rise of e-commerce have allowed counterfeiters exposure to brands that had not previously had an international presence, as well as the ability to bring counterfeit products to consumers around the globe. It may be that a counterfeiter has stolen a company’s trademarks and established a market solely within a foreign country. Alternatively, counterfeiters are notorious for offering cheap fakes on e-commerce platforms that the legitimate brand does not utilize. Counterfeiters do not have to work within the U.S. in order to steal your intellectual property, and you do not have to operate in foreign countries to fight your counterfeiting problems. Developing an international brand protection strategy begins with ensuring that you have a strategy to register your trademarks in other countries, something covered in the toolkit Registering your Trademarks: A Step-by-Step Guide. Additionally, make plans to record your trademarks in these countries and if necessary secure legal counsel to navigate the intellectual property rights environment in foreign countries and fill the proper paperwork necessary to initiate action once infringing goods are found. Developing an international strategy can be a complex process and it is difficult to know where to begin. Because of this, SMEs should take the time to discuss their concerns and questions with peer firms, industry associations, and law enforcement partners here in the U.S. Importantly, take the time to search out recommendations for in-country legal counsel and spend time talking with outside attorneys about your specific situation and strategy. Again, there is no one-size-fits-all solution to this issue, so you should leverage all the resources that you have to identify where your risk exposure may exist and how best to mitigate that risk in an efficient and economically viable way.
STEP 7: Become Familiar with the Available Resources
In the toolkit Other Brand Protection Resources, we introduce you to a range of resources available to SMEs, and larger firms, to assist with brand protection activities. The key advantage that SMEs have is that many groups (for example, law enforcement agencies, e-commerce platforms, and industry associations) are committed to providing free or low-cost resources to SMEs looking to enhance their brand protection activities. Becoming familiar with the wide range of resources available to your business will help you to develop a comprehensive and effective brand protection strategy that leverages all of the resources available to you. Reach out and ask for assistance when you need it and that you become proactive and forward-looking in your brand protection/anti-counterfeiting strategy. The resources at your disposal can assist you in identifying the right partners, an ideal strategy, and the most efficient and effective ways to implement your brand protection plans.
While there is no one-size-fits-all approach to building a brand protection strategy, the steps we have laid out above are an ideal way to craft an approach that should work for your business. Remember, this all starts with registering your trademarks, which involves executing a trademark registration strategy. Once this is complete, you can begin to reach out to e-commerce platforms, law enforcement agencies and other partners in this space (peer firms, industry associations, etc.) for help developing and implementing your larger strategy. Finally, you should develop a strategy to tackle the international market – finding effective legal counsel is key here – and that you become familiar with the host of resources available to you.
Securing Legal Counsel
One aspect of brand protection strategy that we have not addressed directly in this guide is the use of legal counsel. Outside counsel can be very helpful in navigating the intellectual property rights environment, particularly when you are dealing in a foreign country. Yet, the basics of establishing a brand protection strategy can be accomplished without legal counsel, should you choose to do so. With the vast amount of information available online from official sources, the availability of resources focused on SMEs and the ease of filing and recordation – due to the Internet – some businesses find that it is easier to accomplish the building of a brand protection strategy on their own. However, we do advocate for the use of legal counsel in certain situations. First, if you have a trademark that is more generic than distinctive, seeking the advice of legal counsel is highly recommended, particularly when completing registrations outside of the U.S. Second, when developing an international strategy it is recommended that you seek legal counsel in the countries wherein your strategy will focus. In-country expertise will greatly reduce the challenges you will face in the registration and recordation processes, and they will have knowledge of the resources you will need to fully implement your strategy. Finally, once you have identified infringement that you want to pursue through the courts it is essential that you enlist the aid of legal counsel.
We at the A-CAPP Center do not make recommendations on legal counsel, nor do we provide legal advice. However, should you wish to secure an attorney to assist with your brand protection activities, we are happy to connect you with other brand owners who will be happy to share their recommendations with you. Additionally, we would encourage you to look into programs like INTA’s Pro Bono Clearinghouse designed to help SMEs get legal advice on trademark issues.
2.2: REGISTERING YOUR TRADEMARKS: A STEP-BY-STEP GUIDE
According to U.S. common law trademark rights, you can claim ownership of your unique marks as soon as you use them in trade and commerce. Trademark rights begin once they are used by you in a manner that distinguishes your goods from the goods of other firms, and you cannot claim marks that are not used as part of your business. While it is possible to develop a trademark and use it in the market without registering that mark, we do not recommended that you take this approach.
Having a registered trademark allows you to use the full extent of the law to protect your business. Using a mark without registering it substantially limits the extent of your rights. If your business currently operates across state lines or internationally, or if you have plans for growth that extend beyond a single geographic area to which common law trademark rights are limited, you should have a comprehensive trademark registration strategy.
Remember that in seeking to register a trademark you must be clear about the products that will bear your marks. While you do not need to have a unique trademark for each product or service that you provide, you cannot claim rights over broad categories of goods or services. The USPTO offers the following advice when thinking about trademark registration:
“By being specific about the goods or services your trademark represents in your registration, you clearly identify the scope of use. You can legally prevent others from using the same or a similar trademark for related goods or services without your permission. Applying for more goods or services than you currently use, or intend to use, is likely to cause your application to be denied.”
The remainder of this guide walks you through a step-by-step process for recording your trademarks with the USPTO, the official agency tasked with granting recognized trademarks at the federal level. Additionally, this guide discusses state-level trademark registration and the processes involved in registering your marks internationally. Finally, this guide discusses the process for submitting your registered trademarks to U.S. Customs and Border Protection and international customs agencies, a necessary step in the development of a comprehensive brand protection strategy.
Step One: Conduct a Search of Existing Trademarks
Your first step in the trademark registration process should be to conduct a trademark or patent search (or have an attorney do this for you) to ensure that your business name, brand or product name is not already registered – this will help you to avoid infringing upon another company’s intellectual property rights.28 29 30 It can be damaging to a growing business to build up brand equity and goodwill in a trademark that cannot be registered and may eventually need to be changed because it infringes on another company’s mark.31
DON’T GET SUNK!
In trademark law, a “submarine situation” is one in which a startup company uses a certain mark for years and faces objection from the senior mark holder that was hidden from view but pops up once the startup expands due to its success.
The most basic form of trademark search you can do is to conduct a Google search of your desired name, logo or mark. This very simple search is quite valuable because even if your desired trademark is not registered you will have an understanding of whether it or a similar mark are currently being used.
Following your Google search it is essential that you conduct a trademark search using the USPTO Trademark Electronic Search System (TESS) database.
NOTE: To conduct a more narrow or tailored search, use quotation marks to pull together groupings of words to form complete phrases.33 For example, if you want to search for a trademark that has the words AIR and JET in combination you could use the following: “air jet”, “airjet” , “jet air”, or “jetair”.
Step Two: Basic Trademark Registration
Having completed the trademark search step and addressed any potential conflicts with existing trademarks, you are ready to register your unique trademarks with the USPTO. If the results of your trademark search come back clear, meaning that you do not identify any identical or similar names, logos or marks, this does not guarantee that you are free to use your desired name, logo or mark in commerce. You should first register your mark with the USPTO, which will ensure your ability to obtain legal protections for your intellectual property.
Legal Requirements for Trademark Acceptance.
Any individual can file a trademark application with the USPTO, but the mark must meet certain legal requirements for it to be accepted and registered as a federally recognized trademark.34
Primary Legal Requirements
Under U.S. law, if a trademark holder has registered their mark with the federal government they have rights throughout the entire United States.35 A federal trademark registration is only available for marks that are currently used, or that are intended to be used in the future, in interstate commerce or commerce with another country.36 The fee charged by the USPTO for an initial filing is either $225 or $275 depending upon the filing option chosen (for detailed information on filing options, see the USPTO site).37 This fee covers the filing of a “single trademark” in a “single class.”38 To the USPTO, a business name and a related logo are two separate items that require each require their own separate trademark filing.39 Keep in mind that most businesses will need to apply for trademarks for both the text version of their name and the visual use of the name separately.40
The USPTO offers two different trademark application types: a “use-in-commerce” application and an “intent-to-use” application.41 If the mark has already been used in commerce, a “use-in-commerce” application should be filed.42 Under this application the USPTO requires a “specimen” to be submitted to show how the mark is being used in commerce. For a mark connected to services, a specimen should show the mark used in advertising the service (e.g., photographs of a business sign, a brochure, website, or business card).43 Alternatively, an “intent-to-use” application can be filed by those that have not yet begun using the mark in commerce.44 However, in “intent-to-use” applications, the mark will not be federally registered with the USPTO until the mark holder files an additional form with the USPTO called the “Statement of Use” that tells the USPTO the date the mark holder started to actually use the mark.45 This form includes a filing fee per class of goods/services, the date of first use of the mark anywhere and the date of first use of the mark in commerce, and one specimen showing how the mark holder is using the mark in commerce for each class of goods/services.46
You will not be able to receive a valid trademark registration from the USPTO until you actually begin using the mark in commerce through the advertisement, sale or distribution of product.
SMEs have the ability to complete the trademark search and filing processes outlined in these first two steps on their own, without the assistance of legal counsel. However, for some businesses, it may be best to seek the services of a qualified attorney47. Trademark applications submitted by an attorney on behalf of a client were 18% more likely to be accepted than applications submitted without the assistance of legal counsel.
Many intellectual property law firms offer a trademark registration package where the law firm will conduct a comprehensive trademark search, draft the trademark application in coordination with the business, and then file the application with the USPTO.48 These packages typically include an extensive trademark search of the USPTO database, state registered trademarks, trademarks that are not registered but have common law protection, domain names, and various proprietary databases compiled by data amalgamation companies.49
Step Three: Register Your Trademark in Other Jurisdictions
Once you have completed USPTO trademark registration, you should begin exploring your registration options for other jurisdictions. While registration with the USPTO gives a business the broadest coverage in this country, you may also choose to file your trademarks with the state(s) in which you operate.
There is no centralized system that allows you to file across all of the states in the U.S., so state-level trademark registration can be a tedious process, depending upon the number of states in which you plan to file. The process to register your marks at the state level will vary by state so be sure to pay attention to the specific requirements of each jurisdiction. Links to each state’s trademark registration website can be found by visiting the A-CAPP Center’s website (include link address here as hyperlink). To highlight some of the differences and similarities that exist across the states, and to give you an idea of the type of information that you will need, we detail the process in a handful of states below.
Trademarks registered in the state of California are processed through the Secretary of State’s office. The Secretary of State provides trademark seekers with an internet search tool that allows filers to search through existing trademarks, which should be done prior to submission of the trademark application. Submissions can be made online (a seven-step process) or in person using a three-page application. The filling fee is $70.00 per class of goods for which you are seeking to register your marks. Trademark applicants are required to sign a statement attesting to the accuracy of the information submitted, violations are punishable by a civil fine of up to $10,000.
Trademarks are granted by the state for a period of 10 years and are renewable. Trademark applications are handled by the state of Michigan’s Corporation Division. The application process includes completing a brief two-page application consisting of 11 questions about the mark, its use and category of goods to be covered, submitting two sample copies of the mark and paying a $50.00 filing fee. As part of the application review process, the Corporation Division will conduct a search of existing state-registered trademarks to determine if the mark you submit would be too similar to an existing mark. Applicants are notified is their mark is determined to be “confusingly similar” to an already established trademark.
New York’s trademark application is a one-page form that is fillable online (in PDF format) but must be printed and mailed back to the Division of Corporations for processing. Applications must contain three specimens of the mark seeking to be registered. Registration is good for a period of ten years, after which the mark must be renewed. The filing fee for initial registration is $50.00 per class of goods to be covered by the trademark.
As in California, trademark applications in North Carolina are handled by the Secretary of State’s office. North Carolina also provides applications with access to a trademark database that can be searched prior to submission of an application. The submission process requires applicants to submit three original specimens of the mark that are current (no older than six months). The application is three pages long and must be printed, completed by hand, and mailed back to the Secretary of State’s office – fillable versions and online submissions are not currently available. The fee for an initial registration is $75.00. As with other jurisdictions, the fee is non-refundable meaning that if your mark is not approved the fee will not be refunded to you.
Beyond the state level, you should also consider the need to register your name, logos and marks in other countries, particularly the countries in which you plan to do business. As you go about making “planned choices about which parts of the market to focus upon and how to compete within that target market”, keep in mind the need to protect your IP.50 51
Using the Madrid System for International Trademark Registrations
When looked at globally, the wide variety in international trademark protections can seem like a patchwork system of national laws and international trademark registries,52 yet there are certain systems that can make the registration process a bit more efficient.
Under the Madrid system, trademark owners can obtain trademark protections in a number of different countries by filing a single application through a centralized international registration system.53 A person is eligible to use the Madrid System if the applicant either lives in, operates a business within, or is a citizen of one of the 122 countries covered by the System’s 106 members.54 The United States is one of the System’s member countries, so your business likely meets this qualification. In addition, the System requires trademarks to be registered in the country of origin before it can receive international registration. Completing Step Two by registering your marks with the USPTO satisfies this requirement.
The cost of an international trademark registration includes the basic fee plus additional costs depending on where the applicant desires to protect their mark and how many classes of goods and services will be covered by the registration.55
While the fees associated with the Madrid System are higher than those charged by the USPTO, they are not prohibitively expensive. For example, a business based in the US filing a new application for a mark applicable to one category, where specific colors used in the mark are not being protected, would have a basic fee of $653.00. If you wanted this information sent to three countries – China, Russia and Vietnam – this would cost an additional $510.00, for a grand total of $1,163.00. This fee would cover your trademark applications for the countries selected, however, it does not guarantee trademark protections. Each country will determine whether to accept your application or to send it back; just because you have a mark registered with the USPTO does not mean that your mark will not have issues gaining registration with other countries.
Because the Madrid System is widely recognized around the world, most of the major countries into which a company would reasonably expect to expand are party to the System, including Germany, France, China, Russia, and Canada.56 It is also important to note that because international registration relies entirely on domestic registration, should you cancel or abandon your registered marks within the first five years of submitting an international application, all foreign applications and any registrations based on the national registration will be automatically cancelled.57
Most firms will want to register their trademarks in China, given the large volume of counterfeit goods that originate from the country. Follow the link to access a Guide to Trademark Protection in China, which was developed by the European Union and provides valuable information for brand owners anywhere in the world.
European Union-Specific Trademark Registrations
If you plan to focus your global efforts within European Union countries there is a multi-tiered system that allows you to choose your desired level of protection.58 Once you have secured registration of a trademark through the USPTO, determine what you think the scope of your European market will be. Will you operate/sell in only one country? A specific region? Or multiple regions, possibly across the entire EU? Think broadly. Once you have selected your anticipated scope, you can determine which of the following three approaches best suits your needs:
Step Four: Record Your Trademarks With Customs Agencies
As a trademark holder one of the steps that you can take to protect your brand and assist in the fight against counterfeiters is to record your trademarks with customs agencies. Customs agents around the globe are tasked with ensuring that only legitimate products enter into their countries. In addition to dealing with intellectual property rights infringements, customs officers are often times involved in stopping the flows of illegal guns and drugs across international borders, as well as stopping crimes like human trafficking. You, as a brand owner, can assist their efforts by providing customs organizations with records of your trademarks. This helps to facilitate the seizure of infringing goods at the border before they reach marketplaces or consumers.
US Customs and Border Protection
Customs and Border Protection (CBC) is one of your first lines of defense when it comes to counterfeit goods entering the country. CBP stops millions of products coming into the country each year. Yet, without proper trademark recordation they may not have the authorization to seize these products. The e-recordation program allows trademark holders to submit their registered marks (must be registered with the USPTO). Recordation costs $190 per classification and affords the rights holder multiple opportunities to collaborate with US Customs and Border Protection.
Collaborate with US Customs and Border Protection through the e-recordation program
European Union Customs
Through the Madrid Protocol U.S. businesses are able to gain broad protections for the intellectual property throughout the European Union. For specific information about trademark and other IP rights within the EU, please see the USPTO’s EU IPR Toolkit.
Once your trademark rights have been established in the EU, you should visit the IP Enforcement Portal for detailed information about recordation, sharing information about your trademarks with customs agencies, and filing an Application for Action (AFA), which is the official process to request that customs take action against infringing goods.
Spend time understanding the resources available to you within the EU once you have registered your trademarks.
Chinese General Administration of Customs (GACC)
U.S. trademark holders that have registered their marks in China can record their marks with the GACC as a way to gain enhanced trademark protections. The advantage of registering your marks in China and then recording them with the GACC is that Chinese customs is active in examining goods coming into the country as well as those leaving the country. This means that if a counterfeiter is manufacturing products in China that bear your marks, GACC may be able to stop those goods from leaving the country IF you have recorded your trademarks and the goods are seized during export.
If all is in order, you should receive an approval of your recordation request within 30 days, and when approved your recordal will be valid for 10 years; recordation can be renewed for 10-year periods following the initial approval period. As with U.S. Customs and Border Protection, once you have a recorded trademark with the GACC you will have the opportunity to connect with customs agents operating at various ports – should you choose to take the opportunity, we recommended that you identify a law firm or investigative party in-country to assist you with these interactions.
Once you have successfully registered your trademarks in China, you must apply to have them recorded with the GACC.
What you will need to record your trademark with the GACC
For additional information regarding trademark protections in China, review the USPTO’s China IPR Toolkit.
Canadian Border Services Agency
Canada is our second largest trading partner and more than $612 billion in commercial goods traverse U.S.-Canadian border crossings each year. Counterfeiters have often used Canada as an entry point into the U.S. in an attempt to avoid U.S. Customs and Border Protection. In response to the proliferation of product counterfeiting, the Canadian Customs and Border Services Agency (CBSA) has instituted a program that allows rights holder to file a “Request for Assistance” (RFA) application, which will help the CBSA to identify potentially infringing goods. Once identified, the CBSA will seize the goods, contact the trademark holder, and provide details and information necessary to pursue civil litigation against appropriate parties.
2.3: THE THREE M’S OF TRADEMARK REGISTRATION (Manufacture, Market, Maybe): A PRACTICAL GUIDE TO DEVELOPING AND MAINTAINING A TRADEMARK REGISTRATION STRATEGY
One of the things that has likely become clear over the course of this guide is that the costs for registering your trademarks domestically and internationally can quickly add up. Constraints on time and money make it necessary to be strategic about where you register your marks and when. To assist you in creating a broader registration strategy, we have compiled a simple approach to prioritizing and planning your recordation activities that we call “The Three M’s of Trademark Counterfeiting”, which is outlined in the next section of this guide. If resources were endless, it would be no problem to register your trademarks in every part of the globe. But resources are not endless. Constraints on budgets and your time make it necessary to be strategic about your trademark registration strategy. Importantly, a strategic approach is not static but rather dynamic, adjusting to the movements of your business.
Some choices around trademark registration are relatively straight forward – you should first register your marks in your home state and with the USPTO. However, after this is done what is the most appropriate course of action? Following the steps outlined in this guide will help you to answer this question.
The Three M’s of Trademark Counterfeiting Approach was designed to help you identify and prioritize the elements of your trademark registration strategy. This approach begins with understanding that all strategies must acknowledge where the business is right now and appreciate where it is likely to go in the future. It prioritizes registration based upon where your resources are currently invested and where your activities are currently focused. Using this as a basis, the approach then helps you to think strategically about where you business is likely to go.
Following the steps in this guide will help you to develop an actionable trademark registration plan that should become a living document within your business. It can be adjusted as situations change, and it must be updated to keep pace with your activities, growth, and evolution. No matter what stage of development you are in – from start-up to business that has realized decades of success – this guide should be one of your most essential brand protection resources.
Once you have adopted this approach, you should implement an intellectual property recordation process that allows you to stay on top of re-registration requirements and catalogue your existing intellectual property and how each is protected.
Remember, this is a strategy of trademark registration. Protection of your registered marks goes beyond this process. However, following these steps will provide you with the foundation needed to begin compiling the remainder of your brand protection strategy.
Disclaimer: The intent of this guide is a tool and should not be considered legal advice.