Securing trademark registrations is an essential part of a business’ IP strategy, to protect one of its most valuable assets. The scope of trademark registrations that a business should obtain depends on the scope of use of the trademarks. As a business grows and expands operations internationally, securing global protection for trademarks should be carefully considered.

Broadly used trademarks with global registrations may help support favorable outcomes in domain name disputes and Uniform Domain Name Dispute Resolution Policy (UDRP) complaints. Trademark owners may file UDRP complaints when involved in a domain name dispute, which often involves third-party use of a domain name that is identical or confusingly similar to a trademark owner’s mark.

What is the Difference Between a Broad and Local Trademark?

A broad trademark is typically used internationally or across multiple jurisdictions. Such trademarks may have earned significant goodwill with consumers based on marketing and international use. The products or services offered in relation to these marks are usually well-known to the general public in numerous countries. Apple and Microsoft are examples of broad trademarks with global recognition.

A local trademark is one that is primarily used and recognized within a specific geographic area, which may be a specific country or smaller in scope. These trademarks may have significant customer recognition within the geographic area in which they are used but are usually not well-known outside of these areas.

Pros and Cons of a Broad Trademark

A broad trademark may provide a business with significant brand recognition across markets. This can accelerate the mark’s reputation and goodwill globally. Obtaining trademark registrations across markets can help to protect and enforce the mark in multiple jurisdictions. A broad trademark can provide a business with a competitive advantage and the ability to license the mark in multiple jurisdictions. However, managing a broad trademark across jurisdictions can be expensive and complex. Filings with the intellectual property offices of multiple countries may be needed to secure global trademark protection. There are also cultural and social considerations that may impact the use of the trademark in each country. Implementing a strategy to manage, monitor, and enforce trademarks globally is key to maximizing protection while minimizing costs and risks.

Pros and Cons of a Local Trademark

A local trademark secures protection where it is likely needed the most. Securing trademark registrations is generally less expensive than costs for broad trademarks. Managing a local trademark portfolio is also generally easier than a global portfolio and cultural and social considerations are also limited. However, local trademarks may be more prone to infringement in neighboring markets. For example, a local trademark operating and secured only in New York State, may be infringed upon in a neighboring state, which could affect the value and goodwill of the local trademark. A local trademark may also limit growth if the business later seeks to expand globally such as if there are other similar marks already operating in those global jurisdictions.

How a Broad vs. Local Trademark Can Impact UDRP Decisions

One determining factor of UDRP proceedings is whether the third party’s use of a domain name that is identical or confusingly similar to a trademark owner’s mark was done in bad faith. A broad trademark with significant brand recognition can carry more weight in URDP proceedings because it may be easier to prove that a third party acted in bad faith if the trademark is recognized globally. It may be more difficult to demonstrate bad faith for local trademarks because it may be difficult to show that the third party knew of the trademark.

The trademark owner must demonstrate that the third party’s domain name creates a likelihood of confusion with the trademark owner’s mark. It is easier to demonstrate confusion with a broad trademark, as it may have use globally, a large commercial presence, and be recognized by a much larger group of consumers in comparison to a local trademark.

Trademark owners must establish that they own rights to the trademark in UDRP proceedings. A broad trademark may have registrations in multiple jurisdictions, which can help trademark owners establish their rights in the trademark. A local trademark may face some challenges in meeting this requirement. For example, the third party may be based in a different country than the trademark owner, where the trademark owner has no registrations.

Book a Meeting With a Knowledgeable Trademark Lawyer

As a business grows and expands operations internationally, securing global protection for trademarks should be carefully considered, as doing so can help enforce trademark rights. Before commencing a UDRP proceeding, it is extremely important to understand the strengths and weaknesses of the case and whether a trademark owner’s broad or local trademark rights may be sufficient to demonstrate the requirement elements in a UDPR proceeding. Consulting with an experienced New York City Trademark Lawyer can help provide the information needed to implement a robust IP strategy that includes considerations for future protection and enforcement across jurisdictions and on the Internet.