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If you know early on that you intend to expand into foreign markets, it is wise to try to secure your rights in those markets as early as possible. One way to do this is to file an application for International Registration under the Madrid Protocol, an international trademark registration regime administered by the World Intellectual Property Organization.  Again, to be prudent, you would want to conduct trademark searches in those countries where you seek to obtain trademark rights before commencing use of the trademark in those markets.

Nike ran into an issue as it grew and expanded into Italy. A cobbler in Italy had already been using the trademark “swoosh” for many years prior to Nike’s creation. Because trademarks are a form of property, rights in many jurisdictions are determined by priority– which party was the first to use the trademark, or file an application to register the trademark.  If someone else has senior rights to the mark based on use, registration,or a prior-filed application, your use of the mark or application for registration could be challenged, and you could be barred from registering the mark or, in certain cases, prohibited from using the mark. The situation involving Nike and the Italian cobbler who was using the “swoosh” mark illustrates the hazard trademark owners always face: the possibility that another entity is already using your trademark, or a trademark confusingly similar to your trademark, for identical or closely related goods or services, in a given jurisdiction.

Search First, and then Apply to Register Your Trademark!

Your brand is perhaps the single most important thing people will remember about your business. If you are an entrepreneur who is planning on making your mark, you’d be well advised to proactively take steps to claim rights to your mark (your trademark, that is).  Just remember this simple rule: before you can make your mark, you’ve got to protect your mark!. It is critical to know what steps to take to make sure you have a clear claim to your trademark so you will be able to prevent others from infringing on it.

With an experienced and reliable New York trademark attorney in your corner, you’ll be better able to navigate the seas of trademark law. Give us a call so we can discuss the necessary steps to protect your brand.

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Thomas M. Wilentz is a published writer on intellectual property law who has been practicing trademark law for 18 years. His firm, Thomas M. Wilentz Attorney at Law, PLLC, was founded in 2003 and since then has helped clients from all over the USA, as well as from Canada, China, the UK, Australia, Malaysia, Mexico, Singapore and many other countries.