A Guide to Trademarking Your Cosmetic Line Internationally

If you are daydreaming about starting your own business in cosmetics, do your homework about the steps in protecting your trademark.
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It is a great time to be in the beauty industry. Cosmetics sales reached over 500 billion dollars last year, according to Business Wire, and that number is expected to climb to over 750 billion by 2025. Whether you are just starting to develop your makeup line, or you’ve been mixing and blending your own lipsticks for years, now is the time to think about protecting your brand by filing for and obtaining trademark registrations, domestically and across the globe.

Perform a Comprehensive Trademark Search

Before you begin the process to file your trademark, you need to complete a trademark search. This will determine if a similar mark has already been registered in the particular country that you are seeking a trademark registration. While it is frustrating to learn that your trademark has already been registered, it is best to learn this before you file your trademark application, because you will have the ability to make changes to the mark before you apply. Discovering a similar mark exists after you’ve applied could be a costly mistake.

While free and do-it-yourself online searches may seem like a budget friendly option, they may not be in the long run.  These searches usually only reveal exact matches to your trademark. Most trademark disputes, however, arise not from exact matches to a trademark, but to those that may be similar. Therefore, the DIY approach may miss many existing trademarks that could delay your application later on.  On the contrary, the searches conducted by most trademark attorneys are much more comprehensive. They will reveal exact and similar matches to your cosmetic line’s business name, slogan, or logo. It is best to work with an experienced trademark attorney to complete your trademark search.   

Register Your Trademark Domestically First

If your cosmetics line is based in the U.S., you may want to consider domestic registration first.  The process if fairly straightforward, and while it isn’t required for international registration, it can benefit the process. The date you file with the United States Patent and Trademark Office, or USPTO will become your priority date in the United States. This means that anyone seeking to register a similar mark after that date will likely not be approved.      

Then, if you file in other countries within six months of your U.S. filing, you are able to claim the US priority date in these other countries (most of the time). This is especially helpful in first-to-file countries, like China, where it is common for squatters and counterfeiters to race rightful trademark owners to the registration office. These bad faith registrants wish to profit off your mark, either by selling counterfeit goods with your trademark, or ransoming the mark back to you at an inflated rate. Securing a priority date as soon as possible is one of the best defenses against this activity.

Do Your Research

 It’s often an easy decision to register a trademark in the US, but where to go next may take a little more thought. Start by analyzing your business plan.  Look to where you are currently doing business. If you are working with a manufacturer or distributer overseas, you should first register there. Do you sell your cosmetics online? If so, research customer data to determine where your current customers live, and where your target markets can be found.  

Once you’ve created a list of current markets, consider your future business goals. Perhaps you want to expand your lipstick line to Europe or you plan to begin manufacturing your product overseas.  Any country where you plan to do business should be a candidate for trademark registration.  Unfortunately, counterfeiting health and beauty products is a multi-billion dollar business.  Because of this, you may also want to consider a defensive trademark protection strategy, by registering your cosmetics line in first-to-file countries like China and India before someone with ill intent beats you to the trademark office.    

Utilize the Madrid System if Necessary

The Madrid Protocol is an international treaty designed to simplify the international trademark registration process. This filing option allows you to complete a single application in your home language and then apply it to any of its nearly 100 member countries.  If you plan to register your cosmetics line in several countries, you may want to consider this option.  It is important to note, however, that while the Madrid System streamlines the application process, it does not guarantee your trademark will be approved in each country you choose to register.  Those decisions are made on a country-by-country basis.  

If your international trademark plan only includes a handful of countries, you may opt to register directly with each country’s trademark office.  While this may be a more time consuming approach, you are able to tailor each application to the requirements of that country, which may make it easier to be approved.  If you plan to register your cosmetic brand in a country not associated with the Madrid Protocol, you will also need to apply directly to that country’s trademark office.  

Hire a Trademark Attorney

International trademark registrations can be challenging to manage, especially if you plan to register in more than one foreign country. Similarity in trademark law certainly exists from country to country, but there are plenty of differences as well. Keeping up with the unique features of each country’s laws can seem overwhelming. Working with an experienced trademark attorney can help you navigate the process to register your cosmetics line internationally.

From conducting the comprehensive trademark search to responding to Office Actions issued by the trademark office, the process to register a trademark involves countless legal decisions and a great amount of time. Trademark attorneys often work with people that began the process on their own, but quickly realized they needed professional assistance. When you work with an experienced trademark attorney, you can focus on growing your business with the peace of mind that your trademark registration is in expert hands.   

Continue to Police and Maintain Your Mark

While each trademark office issues trademarks, they do not monitor their use or notify you of potential infringement. That responsibility falls on you as a trademark owner.  In order to maintain control of your brand, you must actively monitor and police your mark. Most trademark attorneys offer monitoring services to alert you to possible infringement.  If you suspect that someone is infringing on your mark, you will need to take immediate action. Often, a cease-and-desist letter is all that is needed to warn the infringer, but occasionally, additional legal action will need to be taken. 

In addition to policing your mark, you will also need to maintain it. You do this in two ways. The first is to continually use the mark in the countries you’ve registered. In many countries, use is necessary to maintaining your trademark. Be sure to display the mark just as it is seen in the application. Any deviation from the original mark may not be legally protected. Secondly, you must renew your trademark. In most cases, a country’s trademark office will not notify you of an approaching renewal date. It is crucial to be aware of renewal dates in each country you’ve registered, and begin the process well in advance of that date. Failure to do so could lead to cancellation or abandonment of your mark. 

As you create and grow your cosmetics line, it is important to develop a plan to protect it. Begin by conducting a comprehensive trademark search, to ensure that your mark does not infringe on an existing mark, and then register with the USPTO. Next, take a look at the countries where you are doing business now, and where you plan to business in the future, and begin the process to register your trademark in those countries. Finally, be sure to police and maintain your trademark, in the U.S. and around the world. These steps are vital to your success in the cosmetics industry.

Josh Gerben

Josh Gerben is the founder of Gerben Law Firm, PLLC, a full-service intellectual property boutique offering trademark, copyright, and patent services. Since 2008, Gerben has secured over 4,500 trademarks for clients and has been featured in a wide range of local and national news outlets, including NPR, The Washington Post, The Wall Street Journal, Fox News and more.

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