Protecting Your Trademark Overseas

Burger King Corporation has filed hundreds of trademark registrations with the United States Patent & Trademark Office (USPTO). But if you want the famous “Whopper” while in Australia, you’ll need to go to the nearest Hungry Jack’s. Why?

The answer lies in trademark law. In 1962, an Australian entrepreneur named his new restaurant Burger King and trademarked the term under Australian law. When the American chain began to expand down under, it was forced to use a different name - and chose “Hungry Jack’s”. After years of trademark litigation, the name Hungry Jack’s endured.

The lesson? A federal trademark registration with the USPTO only protects your mark within the United States. Outside of the country, similar marks are not automatically preempted without an additional filing (and even if they are, may be difficult and costly to enforce).

However, registering your trademark internationally is not as burdensome as it may seem. The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration from any of the 106 parties with a single application. Instead of requiring individual applications in the language of each country where an applicant desires protection, the Madrid Protocol allows the applicant to file a single international registration through the United States Patent and Trademark Office. An international application may be filed electronically using the Trademark Electronic Application System for International Applications.

So do you need to register your trademark abroad? For many businesses, it may not be necessary. However, you may want to consider international registration if you anticipate using your mark overseas or know of potentially infringing marks. 

More information on the Madrid Protocol and international applications is available from the USPTO.

A version of this post was originally published by Mallory Law Office, LLC.