Are you a Latin America-based entrepreneur interested in protecting your trademark rights globally?

Below we summarize some of the key factors which individuals and corporate entities should consider when aiming to protect their trademark rights:

Can my trademark be protected?

Whether you have selected a trademark already, or are currently developing ideas for a new trademark, you should consider: (1) whether the mark is distinctive enough to warrant trademark protection, and (2) whether third parties are using the same or a similar trademark for the goods or services with which you intend to use your trademark. Distinctiveness of a potential mark falls on a spectrum from generic terms (not protectable) to fanciful terms (very protectable) with degrees of protectability in between. Finding out whether third parties are already using the same or a similar mark can be determined by asking your legal counsel to conduct and analyze a trademark clearance search prior to you investing time and money into your mark. 

Where should I file my trademark applications?

As part of the trademark clearance process, you should also consider all of the countries in which you provide services or ship goods associated with your trademark, as well as any countries of planned expansion. Different countries work on different timelines for registration of trademarks with their intellectual property offices, and the cost to register trademarks can vary dramatically among jurisdictions. Conducting a centralized and coordinated registration process with your legal counsel is key to deploying an efficient strategy for protecting your mark.

When should I file my trademark application?

As soon as you know that your plans to provide goods or services are within a few years of fruition, you should file a trademark application to cover those goods and services. In every jurisdiction, there is eventually a requirement that you actually sell the goods and/or provide the services in your application, however, you can file before you start offering goods or services as long as you intend to do so in approximately three to six years.

What should I file?

We recommend considering a “house mark” – a single mark that you can use for the name of your business and also in connection with all of the goods and services that you offer, or plan to offer. We particularly recommend this approach if you have a small business. This will help you focus your marketing activities on a single trademark that you can use everywhere and promote your name more efficiently in the relevant industry(ies).

How does the trademark registration process work in the U.S.?

In the U.S. you must file a trademark application with the U.S. Patent and Trademark Office (USPTO) for the mark you want covering the goods and/or services you are either using or intend to use. After the application is filed, it will be reviewed approximately nine months later by an Examining Attorney, who could issue an Office Action if he/she has concerns about your applied-for mark or the goods and services it covers. When an Office Action is issued, you have three months to respond to the questions or concerns raised, with the option to extend the response time an additional three months if needed. The Examining Attorney then will review your response – which can take up to a few months as well – and either progress the application or send another Office Action stating the reasons why the response did not alleviate the relevant concerns.  This process therefore can take at least several months depending upon the complexity of the stated concerns. To help avoid receiving Office Actions, we recommend consulting with a trademark attorney who can assist ahead of time with the clearance process described above. Assuming the issues addressed in an Office Action are resolved, the USPTO will publish the mark for opposition. The opposition period, which lasts thirty days, allows third parties who believe they have a similar mark to the applied-for mark to oppose its registration. If no one opposes the mark, it will proceed to registration. 

How can I make someone else stop using my trademark or a confusingly similar trademark?

You can enforce your trademark rights in the U.S. with or without a trademark registration. Without a registration, you must show that you have common law rights to your mark – in other words, that you have been using the trademark to identify your goods and/or services. If someone else is applying for a trademark registration for a mark very similar or identical to yours, you have the opportunity to file an opposition showing your prior rights in the mark. 

Filing the right trademark in the right place(s) at the right time, and then enforcing your rights against third parties can be challenging to figure out on your own. Brown Rudnick and its experienced team of trademark lawyers and staff are here to help! We are part of a global network that can help protect your trademark rights around the world. Please let us know if you would like help protecting your valuable intellectual property rights!