What is Subsequent Designation and Why It Matters in Trademark Law
Definition & Meaning
Subsequent designation refers to the process by which a holder of an international trademark registration requests to extend the protection of their trademark to additional countries that are part of the international treaty. This request can only be made after the trademark has been officially registered with the International Bureau (IB) of the World Intellectual Property Organization (WIPO). The holder can submit this request directly to the IB or through the U.S. Patent and Trademark Office (USPTO), provided certain conditions are met.
Legal Use & context
Subsequent designation is primarily used in the field of intellectual property law, particularly in trademark registration. It allows trademark holders to expand their trademark rights beyond the initial countries where the trademark is registered. This process is essential for businesses looking to protect their brand in multiple jurisdictions. Users can manage subsequent designations themselves using legal templates available through US Legal Forms, which are drafted by experienced attorneys.
Real-world examples
Here are a couple of examples of abatement:
Example 1: A U.S.-based company has registered its trademark in the United States and wishes to expand its protection to Canada and Mexico. After the initial registration, the company files a subsequent designation with the IB to include these countries.
Example 2: A small business owner in California has an international trademark and wants to extend its protection to additional countries in Europe. They submit a subsequent designation through the USPTO, as they have a basic registration with the office. (hypothetical example)
Relevant laws & statutes
The primary legal references for subsequent designation include:
- 15 U.S.C. § 1141 - Governs international trademark registrations and subsequent designations.
- 37 CFR 7.21 - Outlines the requirements for filing subsequent designations through the USPTO.