Welcome back to our course on Protecting Business Innovations via Trademark.
We're going to talk about local and global registration issues
related to trademark today.
When we think about trademark,
I'd mentioned that it's a local issue,
and this is important because it's more than just country.
It can be a local or state issue within
the United States or a local issue within other countries.
You can have trademark that is in a city or
a state that is different from the national or federal trademark.
Since it's usage based,
it may relate to your usage in a city but not even a state.
So it may be local issues and states issues can become
important relative to federal issues within the US or national issues in other countries.
There are also international issues related to
trademark that do have some effect on trademark registration.
There are issues in the EU about recognizing marks across other countries,
and there are global treaties that apply from country to country related to trademark.
So we'll talk about these global issues,
as well as local issues, in this session.
Now, one consideration in trademark is you'll see the symbols,
as I mentioned before,
TM or R. TM means trademark.
It's kind of a common law symbol.
It's been with us a long time,
just generically it means trademark.
Whether it's registered or not doesn't matter.
It's a trademark. You can certainly use TM if you're registered,
and many companies do it.
They like this symbol.
R also means trademark,
but it means a registered trademark.
So you can't use R unless you have registered.
Most companies that have a trademark have registered their trademark.
They care, particularly a large company,
but they still may prefer the TM symbol, and that's fine.
Both give you the same rights of notification.
State registration also is as good as
federal registration within the US in terms of protecting your rights.
It's still registration.
But in terms of protecting your rights across the nation,
federal registration is better at giving you
priority in states where you're not yet doing commerce.
If you're not yet in commerce in every state,
federal registration can give you some priority in
states that no one is using the market yet.
Registration is very highly state law-focused.
Federal registration only applies where there is interstate commerce.
So if you can argue that a global service,
like a plumbing service,
would not be sold interstate,
you wouldn't see a plumber going from one state to another very often.
Then there's no federal registration justification for this service,
which is local in its nature.
But if there is interstate commerce, you can,
or even an argument of interstate commerce,
you can get federal registration.
Even so, state registration and state rights beat federal registration.
This is an area where the federal government is subsidiary to the rights of the states.
State rights trump federal registration.
Global registration does apply in some situations or contacts.
There really isn't a global registry,
but within the EU,
you can register across multiple countries at once, and across Europe,
there is some EU registration recognition,
EU court cases about trademarks across the EU.
And there's some commonality between UK laws and
European laws to harmonize within EU laws.
There are some treaties globally,
but there's not really a global registration or
multi-country registration outside of this EU context.
The international treaties that can help you though do relate to
some issues about brands that are recognized as global brands.
They're not actually registered per se,
but they may achieve a global brand recognition under
treaty status because of their prominence and use across multiple countries,
which gives you some protections as a global brand.
You get some priority if someone else starts to use your name,
but you have clear global usage protections or recognition.
There may be some prohibitions against someone trying to
leverage your name in your product in your same market.
It may not protect you from everything,
but it might give you some protections.
One thing that also is clear from international treaties is you
can't discriminate against foreign trademark owners.
You can't discriminate against foreigners because you don't like them.
Whether a brand is domestic or international doesn't matter.
If it's registered in your country,
you have to protect it the same,
regardless of who registered it or regardless of who's using it.
Local registration then is important.
State rights beat federal registration.
There's no real international law like there is for a copyright.
There is some protections across country within the EU.
There are some treaties that apply that give you some protections,
but this is not a global law like copyright.
This is very much a local law and local rules,
local regulations and local registration are going to beat
any global issues when it comes to trademark debates or lawsuits.
So get registered locally and use your product
locally if you want to protect your local markets. Thank you.
Theodore Henry King CLARKAssociate Professor
