International Trademark Protection. Is it Possible?

This past week several representatives from Hickory Flats had the opportunity to act as content contributors and sponsors of The Sellers Conference in Philadelphia (www.scoe.biz).  The conference was a mix of serious online sellers as well as beginners.  Lots of great content and experiences were shared, and one of the excellent content contributors was CJ Rosenbaum.  This guy is the “Lawyer for Amazon Sellers” as he likes to be called.  He helps clients with everything from IP law on products to Amazon suspensions.  Legit dude.

We all know that hijackers and such are a pain in the tail and often times platforms like Amazon are of little help.  One of the biggest takeaways I got from his presentation was registering your trademark in the area your goods are PRODUCED, not just sold.

Here is a piece of an article he has written on the subject

“Brand registry does not protect your brand from counterfeiters in Vietnam, Thailand, India or China or anywhere else in the world.  If you want to protect your brand, you need to be able to stop the factories on their home turf.

In addition to protecting your goods from being counterfeited by your greatest threat, you need to protect yourself from your own manufacturer.  Grey goods are those that get onto the market from holes in your distribution chain.  You need to protect yourself from your own factory.

One way you can protect yourself from counterfeiters in other countries is to create enforceable rights in the countries where the products are being produced.”

Well, sounds simple enough, right?  So he actually has a suggestion on HOW to file that in other places.

“If you want to have leverage over a factory in the manufacturing countries, you need to have some threat to them on their home turf.  You need to be able to enforce your rights at their doorstop.

You can obtain the ability to threaten and enforce your trademark by simply filing for trademark protection in most countries through our local intellectual property lawyer, the World Intellectual Property Organization or other IP service providers.
Filing for trademark protection outside the United States relatively simple and relatively inexpensive.  There are two basic ways to file: file individually in each country or use a worldwide filing system like World Intellectual Property Organization which is referred to around the globe as “WIPO.”

Through WIPO, once you have your US trademark, you can file for similar protections wherever your factory is located.

To protect your brand and investment, you need to be able to stop the counterfeiters and that means bringing the battle to them.  You need to hit the counterfeiters where it hurts: their own governmental and court systems.”

So check out “WIPO” and see if it is worth your investment in time.  Do you really need to protect yourself if you are selling a typical “Private Label” that everyone else is selling but with your own sticker?    No.  No point.

BUT… If you have a unique and legit BRAND and product, it is well worth it.

You can check out more of what CJ has to say at his website,   He gets pretty intense but has some killer content.

www.amazonsellerslawyer.com

If you have any questions on brand building or how this can apply to you, you can also email me at tim@hickory-flats.com

Thanks!
Tim Jordan

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