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Should a US brand file a UK trademark?

September 6, 2021

If you’re a US business contemplating expanding to the UK, it’s important to understand if you should also trademark your brand in the UK. Essentially, anywhere you do business, you should create brand clarity. As we lay out your options, we’re going to break down the different types of regional trademarks, the benefits of filing internationally and how to avoid brand confusion. Understanding all of these points will equip you with knowledge as you explore serving new areas. Keep in mind that this is a general overview. To establish if a UK trademark is the right move for your US brand, we recommend a consultation to discuss your specific needs. (You can schedule a consult here.)

 

What does a US brand need in order to file a UK trademark? First, it’s important to understand that there are two different US trademarks but only one allows you to file internationally. The most common form of brand security for a US-based brand is federal trademark registration. This gives you national brand security and allows your brand to avoid confusion when operating across all 50 states, and allows you to file for an international trademark. For an online business, a product line or a service provider, this is a standard amount of protection that allows you to operate with peace of mind. Less popular is the state trademark registration. We never recommend this for brand protection for a few reasons. First, if you are challenged for trademark infringement, the court almost always rules in favor of the party with the federal trademark. Second, you cannot file for an international trademark (UK or otherwise) with just a state trademark. 

 

If you’ve filed a federal US trademark and if you plan to do business in the UK, you have every reason to file a UK trademark as well. The main benefit to receiving a trademark in any country you plan to do business in is that you have extended the arm of your brand’s security. Why? Well, an approved trademark is a stamp of clarity. It says this brand’s name, logo, slogan (or other trademarked assets) does not cause consumer confusion. That’s an important win for any brand and provides so much security if challenged by a competitor or business with a similar brand asset. For example, if a brand that is only trademarked in the US begins to operate in the UK and is sued for trademark infringement, they don’t have much legal recourse. They never received that stamp of approval in the country where the lawsuit is taking place. This will automatically put you at a disadvantage in the court proceedings and could seriously hurt or halt any of your business in the UK.

 

Now that we’ve established the importance of filing a UK trademark if you plan to do business in the UK, let’s address how to file a trademark there. Prior to BREXIT, brands were able to obtain trademark protection in the UK by registering once with the European Union. If you filed a trademark with the European Union before BREXIT, the UK is honoring your trademark. If you didn’t file before BREXIT, you’ll want to file directly with the UK, you’ll need to file directly with the UK Intellectual Property Office, or IPO. Here’s a time-saving tip: If you’re currently filing for a federal trademark in the US, you can also file for a UK trademark at the same time.

 

In short, if you’re wondering, “Should a US brand file a UK trademark?” the answer is yes. The benefit to knowing this before you file your US trademark is that both can be filed at once. It’s efficiency at its finest! If you’re looking to work with attorneys who specialize in filing both US and UK trademarks, inquire here.

 

This post is for general education and does not initiate an attorney-client relationship with us. We always recommend consulting a trademark attorney for your brand’s specific needs. 

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