Wednesday, February 9, 2011
Should we apply for trademark in Mexico?
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.