QUESTION

Where should I register my product to avoid potential brand and design infringement?

Asked on Nov 25th, 2013 on Patents - Utah
More details to this question:
I am releasing a headphone brand and having it made in China. I would like to know what type of precautions I should take to eliminate possibility of trademark infringement and design infringement? I already understand the need to trademark my name and get a design patent as well. My product will also be selling a great deal in South and Central America via my website. My questions are should I register trademarks in those countries? What would be the best solution to eliminate potential infringement on my brand and design? Should I also register trademark in China where product will be made?
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7 ANSWERS

Licensing Attorney serving Portland, OR at Mark S. Hubert PC
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File a patent in the US and in any country you are selling decent volumes thereof. File for a trademark in the US and in any countries you are selling decent volumes thereof. Watch your time frames. You may be running up against some time bars with respect to the patenting of your product.
Answered on Nov 27th, 2013 at 11:42 PM

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Acquisitions Attorney serving Lincoln, NE at Jayne L. Sebby
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You should register your trademark and/or patent in every country in which you think you will sell this product and then be vigilant about stopping infringements.
Answered on Nov 27th, 2013 at 11:42 PM

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Intellectual Property Attorney serving Southfield, MI at Gerald R. Black
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International treaties are available for both trademark and patent protection, and you should take advantage of each. TRADEMARK PROTECTION: You will need to obtain trademark protection for your name in all countries where you will be selling product. The countries that you mention in Central and South America are primarily Spanish-speaking countries, so you may need to decide whether you want to select an English-language trademark, a Spanish-language trademark, or a combined language trademark. PATENT PROTECTION: You would be well-advised to file a Patent Application immediately to protect your technology. If you file initially in the U.S., you have a year to make your foreign filing decisions, and your rights are protected globally. Patent rights are geographical and are granted by the Patent Offices of a particular country. Europe is the primary exception to this in that patent rights can be secured in about 38 countries of Western Europe with a single Patent Application. TRADEMARK vs. PATENT PROTECTION: Patents must also be distinguished from Trademarks in that a Patent Application need be filed before there is any public disclosure of the technology. A Trademark Application is filed generally after the mark has been used. You would be well-advised to seek the advise of intellectual property counsel who is knowledgeable about global protection.
Answered on Nov 27th, 2013 at 11:41 PM

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Since you're contemplating international rights, this is not a good candidate "do it yourself" project. International trademark rights can be protected using a Madrid Protocol application- but there will be national fees when it comes to file a trademark application in the countries you select. You cannot eliminate the possibility of infringment, but can do things to discourage it and/or collect damages/royalties from infringers and licensees.
Answered on Nov 26th, 2013 at 4:04 PM

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Intellectual Property Attorney serving South Jordan, UT at Pearson Butler
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Trademark protection is best in countries where you are selling your product or where you expect others to want to sell your product. It is much less important if you are only manufacturing in that country.
Answered on Nov 26th, 2013 at 3:53 PM

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Appellate Litigation Attorney serving Boston, MA at Banner & Witcoff, Ltd.
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Yes to all of your questions. Register the trademark where the product is made and sold. Register early - as most countries are "first to file" for trademarks - if you are second, you are too late. File for design patents where the product is to be made, and preferably also where it is to be sold. Patent filings MUST be made before the product becomes known to the public - this is the "absolute novelty" rule. If the product has been displayed or is otherwise known (except under confidentiality agreements) you may NOT be able to get patent protection. File early and file often if you can afford it. Search for similar marks on GOOGLE to avoid infringement. These are at least protected by the common law. Search the USPTO database for patents and trademarks to others - www.uspto.gov.
Answered on Nov 26th, 2013 at 3:53 PM

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Intellectual Property Attorney serving Irvine, CA at Shimokaji & Associates, P.C.
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It can often be wise to obtain patents and trademarks in those countries where you primarily sell your product, as well as where you make your product.
Answered on Nov 26th, 2013 at 3:53 PM

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