Wednesday, February 9, 2011

Should we apply for trademark in Mexico?

Dear Rich: I am writing because I have a new home/office product that I am in the process of getting manufactured and we plan to launch by the middle of this year. My company has the U.S. and Canadian patents on the product and we've also applied for trademark protection in the U.S. At the moment, we're considering our options for international trademark protection and have narrowed our list down to a handful of countries that we feel will be important markets for us and are within our budget. U.S., Canada, EU Community Trademark, Japan and Australia. My question for you is this: How important is it to apply for trademark protection in Mexico in this instance? We don't anticipate selling directly in Mexico in the immediate future, but want to make sure we're protecting ourselves as best as we can in North America. Do you think it's a no-brainer to apply for protection in Mexico or something we can hold off on until we see how the product does and how the company grows? As an American company, what risks do we take if we don't apply for trademark protection in Mexico? Does trademarking there help protect against unauthorized "copies" coming into the States or is it really just about sales in Mexico, and the ability to have distribution deals that cover the continent? The Dear Rich staff is biased towards a conservative money-saving approach and for that reason, we think you can wait on the Mexican trademark registration. Your U.S. registration will enable you to prevent the sale of counterfeit merchandise from Mexico (and you can work with U.S. Customs to prevent Mexican knockoffs from traveling into the U.S.) As you may know, you can also file an international application under the Madrid Protocol rules which, if done properly, will guarantee you priority (a claim that you used it prior to someone else) in countries that you designate for trademark protection. If your approach to business is less conservative than ours -- you want serious protection everywhere in the line of commerce --  then you should obtain counsel in Mexico to assist in preparing a Mexican trademark application. It's true that under Mexican trademark law, you do not need to use the mark in Mexico in order to register it there (you must disclose that the mark has not been used). However, actual use of the mark in Mexican commerce will be essential for disputing claims of priority. And of course, we must remind you that having these rights won't mean much if you can't afford to enforce them.