Where should I register my product to avoid potential brand and design infringement? 10 Answers as of November 27, 2013

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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Tran & Associates | Bao Tran
Yes, you should patent to protect yourself PowerPatent has a patent software called ProvisionalBuilder(R) that automatically searches for similar ideas. As you enter the title and summary, the software runs an automatic search to suggest similar patents you should look at to see how similar patents are written. You should get patent application as soon as you can to prevent others from copying you. This is important as we move into the First to File era. Software costs $99 so it i very inexpensive yet guides you to prepare a high quality patent application that one year later you can turn to a lawyer to convert into a utility application for you. A feature summary is at http://www.powerpatent.com/prwelcome THe software helps you organize information, and through your summary description, brings back sample patents in the same field for you to use as examples.
Answer Applies to: California
Replied: 11/27/2013
Mark S. Hubert PC
Mark S. Hubert PC | Mark Hubert
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.
Answer Applies to: Oregon
Replied: 11/27/2013
Sebby Law Office
Sebby Law Office | Jayne Sebby
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.
Answer Applies to: Nebraska
Replied: 11/27/2013
Gerald R. Black, Esq.
Gerald R. Black, Esq. | Gerald R. Black
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.
Answer Applies to: Michigan
Replied: 11/27/2013
Law Office of Kirk Buhler
Law Office of Kirk Buhler | Kirk A Buhler
It looks like you answered your own question. You should file for the trademark in all countries where you will be making or selling the product. The Trademark process takes about a year from the filing to the mark issuing. Money is generally the determining factor on how many countries you want to file. You should start with US, China and Mexico. You can determine additional countries based upon the population in the countries. You should also file a design and or Utility patent in the US or PCT office to reduce the potential for your product being directly copied. The US currently operates on a "First to File" and you must file a patent application within one year of public making or use, or sale.
Answer Applies to: California
Replied: 11/27/2013
    Turner Padget Graham & Laney, P.A. | Bernard S. Klosowski, Jr.
    Your questions involve patent and trademark law across different jurisdictions and are too numerous to answer in detail in this forum. Generally - in addition to a possible US design patent application and a federal trademark application - you may want to seek "international" protections via the PCT and Madrid Protocol processes. You should also consider the other side of the coin - whether your design and/or mark or trade dress potentially infringe other's patent or preexisting mark before you invest a lot of money and time into something you don't have the right to use. An hour with an intellectual property attorney would be a wise investment to help you determine how to protect your rights AND avoid problems with other headphone companies.
    Answer Applies to: South Carolina
    Replied: 11/27/2013
    Microtechnology Law & Analysis | Daniel Flamm
    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.
    Answer Applies to: California
    Replied: 11/26/2013
    Shimokaji & Associates
    Shimokaji & Associates | Michael Shimokaji
    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.
    Answer Applies to: California
    Replied: 11/26/2013
    Banner & Witcoff, Ltd. | Ernie Linek
    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.
    Answer Applies to: Massachusetts
    Replied: 11/26/2013
    Webb IP Law Group
    Webb IP Law Group | Jason P Webb
    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.
    Answer Applies to: Utah
    Replied: 11/26/2013
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