Most companies today operate on a global scale and generally conduct business in countries outside the U.S. It can be very helpful to have international protection for your trademark or brand if you are considering a global footprint for your company or if you are transacting business outside of the U.S. already. Trademark rights are jurisdictional, which basically means that just because you own a trademark in one country, it does not give you rights in another. Many countries operate on a “first to file” basis, so that the owner who files for the trademark first has priority and enforcement rights, regardless of whether they are actually using the mark in that country. There can also be squatters or counterfeiters who will take advantage of a popular brand name and use the trademark process to interfere with your legitimate business use.
If you are manufacturing or producing goods outside of the United States, or if you have any key partnerships or customers that are located in other countries, international trademark filings can be a good way to protect your brand and your business activities in those countries. You can select countries based on 1) where your manufacturer is located, 2) where you have or anticipate growing a large consumer base and/or 3) where you plan on starting an office. If you anticipate expanding your business into another country within the next three years, it is likely worth considering a trademark filing in that country, at least for your main brand or house mark.
International filings can be expensive, so targeting key countries of growth or expansion or where squatting or counterfeiting is higher (e.g., China) is likely the most cost-effective way to approach foreign trademark filings. You can also reduce the up-front costs by filing in a few target markets first and then expanding the coverage in phases over time. There are two ways to file in foreign countries, either nationally in each country or through a Madrid application, which is one application designating multiple countries. Madrid applications can be much cheaper than individual national filings, so you should consider that option to keep costs down if you decide to file in a large number of countries.