Trademark Titan™ Blog

Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

Trademark Titan™ Blog  - Information for in-house counsel, brand owners and entrepreneurs. Committed to international trademarks, copyrights, branding and other IP issues.

United States Trademark Registration and Protection: Five Potentially “Fatal” Mistakes Made by U.S. and Foreign Brand Owners

United States Trademark Registration and Protection: 

Five Potentially Fatal Mistakes Made by U.S. and Foreign Brand Owners

Seeking United States trademark registration protection is full of traps for the unwary, not only for pro se applicants but also for attorneys that step outside of their every-day specialties. This post focuses on five trademark traps (and there are many others) that U.S. and foreign brand owners make when seeking U.S. trademark registration and protection.

U.S. Patent and Trademark Office Campus

1. United States is not a “first-to-file” country. Because many foreign trademark applicants are domiciled in countries that grant exclusive trademark rights to those that file and register first, they fail to understand that trademark rights in the United States are created based upon trademark use rather than federal trademark registration. Thus, even if there are no pending trademark applications or registrations on the United States Patent and Trademark Office (“USPTO”) database for the same or similar mark that does not mean that a trademark is available for use and registration.

Example:

  • In 2008, Company A begins using the mark APEX in San Francisco for insurance services and begins expanding into neighboring states.
  • Company A does not seek federal trademark registration.
  • In 2011, Company B begins using the mark APEX in NYC for insurance services and secures a U.S. trademark registration for its mark and services.
  • Although Company B is the first to file a trademark application with the USPTO for the mark APEX, Company A may still object to the filed application for APEX via an opposition proceeding or seek cancellation of a resulting registration, within a certain period of time, on the basis of priority of use rights.

It is well established that the first company to use a mark in the U.S. (on a systematic and continuous basis) has priority not only with respect to use of the subject mark for the associated, and related, goods/services (in the geographic regions within which the mark is used) but also with respect to federal trademark registration.

For that reason, it is imperative that companies undertake a comprehensive trademark search not only for marks on the USPTO database but also for common law trademarks (those in use but not federally registered) as well as business names to ensure that the proposed mark is available.

Failure to undertake such review is risky and may result in thousands, if not hundreds of thousands, of dollars in litigation costs and re-branding efforts.

Read more about how trademark rights are created here.

2. Lack of bona fides (navigating this slippery slope). Under U.S. trademark law, brand owners may file U.S. trademark applications either before or after their marks launch. If they file before brand launch, they must have a bona fide intent to use the applied-for mark for the listed goods/services in U.S. commerce as of the trademark application filing date.

We Understand That Getting From Point A to Point B is Not Always a Straight Line

U.S.-based (and foreign) applicants may file, what is known as, an intent-to-use (a/k/a 1(b)) trademark application prior to brand launch; however, they must ultimately use the mark in U.S. commerce before a registration will issue.

Unlike U.S.-based applicants, however, foreign applicants may secure U.S. trademark registration without using the mark in the U.S. prior to registration issuance under Section 44(e) (based upon a foreign registration) and Section 66(a) (based upon a foreign registration and filed via the Madrid Protocol).  Those filing basis still require foreign applicants to have a bona fide intent to use the applied-for mark in U.S. commerce for the listed goods/services.

Lack of a bona fide intent to use a mark for the goods/services listed in an application (i.e., lack of a written plan to use the mark for the goods/services or actions taken to bring the mark/brand to market) renders an application and resulting registration vulnerable to attack by third parties on the basis the applicant lacked the pre-requisite “bona fide intent to use” the mark in the U.S.

This is problematic for many foreign applicants because many rely upon their home country trademark registration(s) for securing U.S. trademark registration, which may list goods and/or services of which they never intend to sell under the applied-for mark, which is permissible under their own country trademark law. 

For those reasons, U.S. and foreign applicants should list only those goods/services in their U.S. trademark applications that they intend to sell in U.S. commerce or run the risk of third party challenges and losing valuable trademark rights.

To read more about lack of bona fides, read my blog post here.

3. Trademark use is required to maintain registrations. As mentioned above, foreign applicants may secure U.S. trademark registration without having used an applied-for mark in U.S. commerce prior to registration. At a certain point, however, the foreign registrant must show use of a registered mark in the U.S. in order to maintain its registration.

During the fifth and sixth year of registration, and at the tenth-year anniversary and every ten years thereafter, a trademark registrant must provide evidence of use of the mark, as registered, in the United States for the goods/services listed in the registration.  Failure to show valid use of the registered mark in the U.S. during those periods will result in the cancellation of a registration by the USPTO.  Note that even slight changes to the manner in which the mark is used may render the registration invalid (i.e., using the registered mark APEX as “APEX PLUS”).

Failure to use a registered mark in a manner acceptable to the USPTO may result in application abandonment or registration cancellation.  Furthermore, a mark not used during a consecutive three-year period post registration is vulnerable to cancellation on the basis of non-use.

For more information about acceptable specimens of use, read my blog post here.

4.  “I searched the USPTO trademark database and my name is available because a “competitor” abandoned its trademark registration for the same mark”

Unfortunately, it’s not that simple.  Trademark rights in the U.S. are not

Things are not always what they seem

created based on trademark registration; they are based on actual use.  Therefore, if the owner of the now cancelled trademark registration is still using the once-registered mark, that continued use would trump the “new-comer’s” use and even a “new-comer’s” issued trademark registration.

Don’t get caught in this trademark trap…trust me.

5. “I secured my “Business Name LLC” with the state, so I own the name and trademark”

Although you have successfully registered “Business Name LLC” with state “x” … that does not give you any legal right to use that name and corresponding trademark in consumer-facing marketing and business activities if that name infringes existing third-party business name and/or trademark rights.

States typically review names to ensure that they are “distinguishable on the record” from other registered business names for the purpose of identifying a specific entity from another, not whether the names are “confusingly similar” (a/k/a infringing). 

The only way to know if a selected name is available for use and registration is to conduct initial trademark and business name clearance.

You can read more about trademark clearance here.  

Closing

Intellectual property law (patents, copyrights, trademarks, trade secrets) is filled with traps for the unwary; and in many cases IP attorneys specialize in one of those areas only.  Just as you would hire a heart surgeon for your heart surgery, hire a “trademark attorney” for your trademarks and not “an attorney that does trademarks” because, as I have said before, there is a difference and it could mean the difference between life and death for your brand launch…  

IS THERE A TRADEMARK ATTORNEY” IN THE HOUSE!?

Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband and a father of an amazing 13-year-old son.

How to Protect Trademarks Internationally: Part Three of a Three-Part Series

How to Protect Trademarks Internationally:

Part Three of a Three-Part Series

If you have not read parts one and/or two, I recommend that you do so here   (Part 1) and here (Part 2) before reading this post.

Part 3: International Trademark Filing Strategies and Critical Post Registration Requirements

Once brand owners have identified their core marks and products, selected the primary countries of interest, identified which of those countries are members of the Madrid Protocol and European Union, as well as any other country pacts for filing strategy, such as Benelux (covering Belgium, Luxembourg and Netherland), African Intellectual Property Organization and African Regional Intellectual Property Organization, with each covering certain African countries, and undertaken proper trademark clearance in the relevant countries, they are ready to formalize their trademark application filing strategy.

As a first step, brand owners should undertake a cost estimate review for the selected countries and marks.  The brand owner is then ready to prioritize the primary countries and marks based upon its annual budget.  As discussed in Post 1, the filing strategy may consist of a one to three year (or more) “rolling” filing strategy depending upon budget and, as discussed in Post 2, you may spread out the filing costs during the six-month priority period provided by the Paris Convention.  

I. International Trademark Filing Strategy – Example

Selected countries of interest:

  • Brazil, Canada, China, Columbia, France, Germany, India, Mexico, Norway, Panama, Poland, Spain, Sweden, Switzerland, U.K., and all of the EU member states if economical

How should the company proceed with trademark protection?  Should the company use the Madrid Protocol? European Union trademark filing? Or national filings? Or possibly all three?

The company should first consider the risks with respect to utilizing the Madrid Protocol and European Union trademark filing systems with the primary risks being those discussed in Post 2.  If the risks are low, the next step is to determine the Madrid Protocol and European Union member countries and the countries requiring national filings.

Madrid Protocol member countries/jurisdictions (based on my example):

  • China, Colombia, France, Germany, India, Mexico, Norway, Poland, Spain, Sweden, Switzerland, U.K., and the EUTM (covers all 28 EU member countries)

EU Member countries (based on my example):

  • France, Germany, Poland, Spain, Sweden and U.K.

Non-member countries requiring national filings:

  • Brazil, Canada, Panama

A few important considerations:

  • Brexit. With the U.K. possibly exiting from the EU, it is absolutely prudent to also file a national U.K. trademark application if a EUTM application is filed in lieu of national EU country filings.
  • China. Although China is a member of the Madrid Protocol, it’s strongly recommended that China not be designated via Madrid application due to the short time period within which a trademark applicant must respond to an office action.  Instead of designating China via the Madrid Protocol, companies should instead file national applications via local counsel.
  • EUTM. If the company is confident that its mark is eligible for registration in all EU member counties (no major potential third party objections or non-distinctiveness issues), or is willing to take the risk in exchange for securing broad trademark protection, the company may elect not to file national EU member country applications (e.g., France, Germany, Poland, Spain, Sweden and U.K.) in exchange for protection in all 28 EU member countries via the European Union trademark, which may be filed via the Madrid Protocol application.
  • Madrid Protocol and EUTM vs. national filing cost comparisons:            
    • Madrid Protocol vs. national filings (for Madrid Protocol member countries) can provide substantial savings.                   
    • In some cases, those savings can be over 40%!
  • EUTM vs. individual EU member national trademark applications:        
    • Average national filings per country: ~$1700 (assuming there are no obstacles to registration and might only cover one class of goods/services for that cost).
    • EUTM for ALL 28 countries: ~$3500! (assuming there are no obstacles to registration and may cover up to three classes of goods/services for that cost).

Potential Strategy:

File Madrid Protocol application for:

  • China, Colombia, France, Germany, India, Mexico, Norway, Poland, Spain, Sweden, Switzerland, U.K., EUTM

Requirement: a brand owner must own either a pending home country trademark application(s) and/or registration(s) that would form the basis for the Madrid application.

National trademark applications for:

  • Brazil, Canada, China, Panama

Paris Convention:  If Paris Convention priority is available, the brand owner may opt to file the Madrid application first then file the national applications over several months to spread out the filing costs. 

As you can see, there are many filing considerations and options for seeking global trademark registration protection.  Rather than aimlessly filing global trademark applications on a “hit-or-miss” basis, brand owners should first create a well-crafted strategy, one that minimizes risks and costs while maximizing protection, and then execute that strategy while always maintaining flexibility for change, when necessary.

II. Critical Post-Registration Requirements

Once brand owners secure trademark registration protection for their marks and products, there are certain actions they must take to ensure that their rights remain active and enforceable, including the following:

  1. Use: If registered marks are not used for the registered products for three consecutive years post registration (five in some countries), their registrations become vulnerable to cancellation by third parties for non-use.
  1. Proper Use: Using marks improperly may render them generic terms with all trademark rights being lost.  Did you know that aspirin, escalator and yoyo were all once trademarked terms?  Did you know that the mark Google® is being challenged as being a generic term for searching the Internet?  “You won’t google that! You’ll search the Internet via Google® search engine for that.”  That issue is another post…at another time.
  1. Trademark Licenses: Some countries require trademark registrants to record trademark licenses with their Trademark Offices if registered marks are licensed to third parties for use in their countries.  Failure to record a trademark license in those countries renders a trademark’s registration vulnerable to cancellation for non-use, since absent the recordal, the mark is deemed not in use by the trademark owner. 
  1. Maintenance: After registrations issue, their owners must make periodic maintenance filings and pay periodic maintenance fees to maintain active and enforceable trademark registrations. Failure to make those filings will result in the cancellation of issued registrations, resulting in the loss of trademark rights.

III. Closing

To summarize, trademark owners must recognize that trademark rights are country specific, there are first to file countries and first to use countries, and trademark registrations are essentially government issued licenses for the right to import and export branded products and conduct business in a country.

Companies should audit their trademark portfolio annually and prioritize their trademarks, products and countries of interest.  Companies should also actively manage their portfolio and implement protocols for trademark clearance and enforcement strategies and – most importantly- develop an overall focused strategy that takes into consideration the budget while minimizing risks and maximizing protection.

Brand owners that fail to implement a coherent and consistent global trademark strategy will likely find that they have failed to maximize brand protection, possess inadequate trademark protection for key brands and products in key markets, have not minimized business and infringement risks and consistently run over budget.

IV. Your Assignment and Action Items

  • Undertake a cost estimate review for your primary country filings;
  • Prioritize the primary countries and marks further based upon the estimated costs for registration vs. the annual budget;
  • Prepare a one to three year (or more) “rolling” filing strategy, if necessary; and
  • Review the strategy every six months or year and remain flexible.

Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband and a father of an amazing 13-year-old son.

Trademark Titan Blog’s Tuesday Tip: Three Steps for Creating a Brand Name Powerhouse Using a “Family of Marks”

Three Steps for Creating a Brand Name Powerhouse Using a “Family of Marks”

Trademark owners that use a number of marks that share a common prefix or suffix have an opportunity to establish what is known as a “family of marks.” For example, a brand owner that uses six different marks that share the prefix “SENSE” (i.e., SenseGloss, SensePlus, SenseRight, SenseDraft, SenseAll and SenseView) for a line of product may establish a legally recognized family of marks. Once established, a family of marks bestows upon its owner a power much greater than the sum of the individual members of that family.

The fundamental benefit of raising a family of trademarks is that, once legally recognized, the trademark owner may successfully enforce its family of marks against competitors’ marks incorporating the common “family term” (i.e., Sense). In effect, the common term appearing in each of the family member marks becomes recognized by customers as an identifying trademark – and a particular source indicator — in and of itself (i.e., Sense) when it appears in any composite mark.

Even though a junior user’s mark may not be that close to any one member of the family of marks, i.e., ExtremeSense, its use of the distinguishing family term “Sense” may cause a likelihood of consumer confusion. Its use may cause confusion because if purchasers have come to associate marks that incorporate the term “Sense” with a single source for a particular product, consumers may reasonably believe that the competitor’s mark ExtremeSense is a new addition to the “Sense” family – thus causing consumer confusion and deception as to the source of the ExtremeSense products.

Although some brand owners believe they own a legally protectable “family of marks,” the truth is that they have not taken the proper steps required under trademark law to establish a family of marks.

Below is a list of key requirements for establishing a legally recognized family of marks under U.S. law:

1. Joint adverting: Advertising that uses the marks in a manner that associates each of the marks as belonging to the same owner.

2. Promoting the marks as a “family” so as to create an association between the marks in the minds of consumers.

3. Use of the family of marks in everyday sales activities.

The key to creating a legally recognized family of marks is to create common exposure of the marks and recognition of common ownership based upon the common term appearing in each mark.

Simply using a series of marks that share a common term does not establish the existence of a legally protectable family of marks; there must be recognition among the purchasing public that the common term or characteristic is associated with the same source.

How to Protect Trademarks Internationally: Part Two of a Three-Part Series

How to Protect Trademarks Internationally: Part Two of a Three-Part Series 

This post is part two of a three-part blog series on how to protect trademarks internationally. 

If you have not read part one, I recommend that you do so here before reading this post. 

Part Two:

Int’l Treaties and Laws for Global Trademark Protection

There are several key international laws and treaties that brand owners should consider when preparing a global trademark filing strategy, including the Madrid Protocol, European Union Trademark system and Paris Convention for the Protection of Industrial Property. 

Madrid Protocol

The Madrid Protocol is an application filing mechanism used by trademarkNasa Image owners that own home country trademark applications or registrations. A Madrid Protocol application, also referred to as an International Trademark Application and ultimately an International Registration (or a/k/a an “IR”), is an application filed through the applicant’s home country trademark office, which is the U.S. Patent and Trademark Office, or USPTO, for most U.S. companies. 

Once the Madrid Protocol application is filed with the USPTO, the USPTO reviews that application and, if all is in order, certifies the application and forwards it to the World Intellectual Property Organization located in Geneva Switzerland – also known as the WIPO.  The WIPO then reviews the application and, if it meets the minimum filing standards, certifies the application and forwards it to each of the designated country trademark offices. 

For example, if a U.S. trademark owner designates India, Italy, Finland and France in a Madrid application, the WIPO “files” those applications on behalf of the trademark owner in each of the local trademark offices.

Just like anything else, the Madrid Protocol has advantages and disadvantages.  

The primary advantages of the Madrid Protocol are the following: 

  • There are lower initial filing costs compared to filing national trademark applications via local counsel (those initial savings are mostly due to avoiding local counsel fees); 
  • There is only one Madrid trademark application for a mark (and one resulting Madrid registration), one filing fee (per group of designated countries) and one renewal for all countries designated in a Madrid registration; 
  • Currently, the trademark owner may designate up to 99 countries in a single Madrid filing; and 
  • Once the Madrid Protocol application matures into a registration, the brand owner may continue to designate additional countries within the same Madrid filing. 
  • Key Notes: 
    • After the initial country or countries have been designated and the Madrid Protocol registration issues (known as your “International Registration”), any subsequent country designations will still incur additional filing fees for those countries. 
    • The issued “International Registration” does not grant any substantive trademark rights to any of the designated countries.  The brand owner must still wait for each country office to review the designated country trademark application in the country office; rights are not granted or created in any country until the country trademark office registers the mark. 

Major disadvantages of the Madrid Protocol are the following: 

  • The Madrid application and registration and all of the designated country filings are dependent on the underlying home country trademark filings for the first five years of the registration.  Meaning that if the underlying trademark filing(s) that form the basis of the Madrid Protocol registration ultimately fail or expire within that five- year period, then all designated country applications and issued registrations would also fail. 
  • If the brand owner’s underlying filing(s) forming the basis for the Madrid application fail during the dependency period, the brand owner may still re-file in any of the designated countries via local counsel within the designated grace period and retain the Madrid application priority filing date, which has the effect of substantially increasing overall costs. 
  • Unlike many country trademark offices, the USPTO requires narrowly and accurately defined products/services in trademark applications.  Thus, trademark applications filed in other countries via the Madrid Protocol based on a U.S. trademark filing will also contain the same narrow scope of products even though a designated foreign country may allow broadly defined products.   Therefore, it is sometimes advisable not to utilize the Madrid Protocol for certain countries and instead file national applications in order to secure broader trademark protection. 

For those reasons, brand owners should consider the practicality and risks of using the Madrid Protocol strategy and try not to focus only on the Madrid Protocol cost savings… no matter how enticing they may be… 

European Union Trademark (EUTM)

With respect to the EUTM trademark filing system, a EUTM covers all 28 EU member countries in a single trademark application.  

Primary advantages of the EUTM are the following: 

  • Brand owners need only file one trademark application to cover all EU members, pay one filing fee, and pay one renewal fee; and 
  • There is an automatic extension of protection to new EU member countries without any additional filings, unless a third party from the extended country successfully objects to the extension based upon its prior rights in that country. 

However, there are also the following disadvantages for utilizing the EUTM trademark system:    

  • A EUTM trademark registration is either “good to all” EU member countries or “good to none.”  In other words, if there are parties with prior rights in any EU member country and should a party with prior rights object to the filed application or an issued EU registration and prevail, the EUTM trademark filing would also fail.  That is true even if the objecting party uses its subject mark in an EU member country that is not of interest to the EUTM applicant/registrant. 
  • If a third party successfully objects to a EUTM filing, the applicant may still re-file in any of the EU member countries within the designated grace period and retain the EUTM trademark application priority filing date.   

For that reason, companies should conduct clearance searches prior to filing a EUTM trademark application to identify any third-party rights that may present significant barriers to registration and use. 

Paris Convention for the Protection of Industrial Property 

The Paris Convention is an international treaty that allows nationals of contracting parties – or states – the same equal rights as nationals of other contracting parties and states. Earth

With respect to trademark rights, the Paris Convention priority grants a trademark applicant a six-month priority period within which to file subsequent foreign trademark applications.  During that six-month period following an initial trademark filing, a trademark owner may file in other member countries and receive the same priority filing date as listed in its earlier filed application.  

Example

  • ABC files in the U.S. on Jan. 1, 2017 for the mark ‘Palm Tree’ for umbrellas 
  • XYZ files in Germany May 1, 2017 for the mark ‘Palm Trees with palm tree design’ for umbrellas 
  • ABC files in Germany June 15, 2017 (claiming a priority filing date of 1/1/17) for the same mark and products 

Under the Paris Convention priority, ABC’s German application receives an earlier filing priority date.  Thus, as between these parties, ABC is deemed to have earlier filing rights in a first-to-file country and may prevent XYZ’s use and registration of its mark based on filing date priority and resulting trademark registration.  

That is the power of Paris Convention priority!  All brand owners should utilize this powerful tool when undertaking a global trademark filing strategy, which allows brand owners to spread out costs over the six-month priority period while maintaining the earliest possible priority filing date in key countries.

Your Homework Assignment and Action Item

Identify which of your priority countries are members of the Madrid Protocol here and European Union here

You have now identified which countries may be protected via the Madrid Protocol and EUTM filings and which countries must be protected by filing national applications. 

The next step is to prioritize the marks and countries and initiate trademark clearance searches. 

Post 3, in this three-post series, will provide examples for seeking trademark registration for marks and products in certain countries and jurisdictions while utilizing national, Madrid and EUTM filings. 

Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband and a father of an amazing 13-year-old son.

How to Protect Trademarks Internationally: Part One of a Three-Part Series

How to Protect Trademarks Internationally:

Part One of a Three-Part Series

Overview / Introduction of Three-Part Series

In this three-part blog series, I will discuss international trademark registration planning and protection strategies.  Specifically, I will cover the following topics: 

Part 1: Global trademark protection strategy and planning considerations;

Part 2: International treaties and laws strategically used for global trademark protection; and

Part 3: International trademark filing strategies and critical post registration requirements. 

If you listened to my Podcast Episode 2, you will know that I discussed how international trademark rights are created.  If you have not listened to Episode 2, I suggest that you do so before reading this post (it’s only 8 minutes long): Podcast Episode 2 is here

As I discussed in Podcast Episode 2, there are two primary ways in whichEarth international trademark rights are created and they are as follows: 

  • “First to file” principle – meaning whoever files a trademark application first for certain products or services and secures trademark registration is generally considered the trademark owner in the majority of countries; and  
  • “First to use” principle –  meaning whoever uses a mark first for certain products or services is typically considered the owner of the mark – but only in the geographic regions in which the mark is actually used, leaving open geographic regions where the mark has not been used for someone else to create rights in the same or confusingly mark. 
    • For that reason, securing trademark registration rights in first to use countries is still recommended in order to secure and reserve future geographic expansion rights in geographic regions where the mark has not yet been used. 

Before proceeding any further, I want to first explain that use of the terms “product” and “products” also refer to and cover “services” and use of the terms “marks” and “trademarks” also refer to “service marks” as the legal standards for both are essentially the same.  So for those service providers reading this post…no worries as the legal standards for products apply equally for services.       

As a starting point in the brand expansion process, it’s important to understand that U.S. – or home country – trademark rights and registrations do not provide brand owners with the right to freely expand into other countries as trademark rights are country specific.  

Therefore, prior to brand and product expansion into new countries, trademark owners must first determine whether their use of “their” trademarks in a new country may actually infringe third party trademark rights already established in that country by undertaking trademark clearance review.  This initial trademark clearance step will provide an assessment of the risks of infringement, and potentially avoid the need to rebrand after product launch should a third party allege infringement and possibly file an action, and whether the mark is distinctive and thus eligible for trademark registration protection.

Part One: 

The Strategic Plan & Overview

As a first step, brand owners should prepare a filing strategy that is based upon their core trademarks and products and their marketing and business strategy.

With respect to trademarks, they should be prioritized based upon their value to the company:

  • First tier marks are House marks, which are those marks used across product lines, and major product names; 
  • Second tier marks are important product names used in major markets; 
  • Third tier marks are valuable names that are used in certain regions as well as names used as sub-brands; and 
  • Fourth tier marks are typically slogans and non-traditional marks (such as trade dress, sounds and configuration designs). 

With respect to products, companies should focus on top-tier countries and jurisdictions where: 

  • The majority of sales are taking place;
  • Key customers are located;
  • They have distributors and licensees;
  • They are manufacturing; and
  • They plan to launch their products in the near future (1-2 years). 

Nasa ImageOnce the core marks and products, and key countries and jurisdictions, have been identified, brand owners should plan their trademark application filing strategy accordingly to maximize protection, reduce uncertainty and minimize overall future registration costs. 

Companies should also audit their trademark portfolios periodically for any gaps in protection.  The audit should include whether there are any core trademarks and products not adequately protected in priority countries either due to recent product line expansions, acquisitions or newly opened markets. 

  • Once audits are completed, brand owners should review their current filing strategy and feel free to modify it, as necessary, to ensure that priority is maintained. 

As companies prepare their global filing and protection strategies, they should plan a consistent strategy that covers core marks and core products and avoid the – what I call – “reactive strategy” – one that lacks focus and typically “wastes” marketing’s limited resources.  A “reactive strategy” is just that – a strategy that reacts to the “next emergency” at the detriment of protecting the company’s core marks and products and one that exhausts the annual budget.  

And speaking of budget, due to the costs of protecting trademarks globally, and believe me they are much higher than most brand owners expect, companies should consider preparing a rolling filing strategy that may be carried out over 1 to 2 years or even 3 plus years depending upon the size of the portfolio and the number of relevant countries.  For that reason, global brand protection should be carefully considered and, in most cases, companies will need to make difficult decisions regarding which of their brands and products to protect, when to protect and where to protect.  

Clearance

Once the core marks and products have been identified and the strategy has been prepared, the next step is to conduct trademark clearance searches in each of the relevant jurisdictions and countries. These searches may find third party trademark applications and registrations and possibly common law trademarks that may potentially block the use and registration of a brand name in a selected country. 

If the searches identify potentially high infringement risks in certain countries,IMG_2012 the company may decide whether to seek cancellation of high risk registrations, seek purchase of high risk registrations and trademarks in order to clear the path for its own trademark registration and rights or adopt a different name altogether to avoid uncertainty and potentially costly trademark litigation and re-branding.

The searches should also reveal whether the proposed name is distinctive (meaning that it functions as a trademark, or source identifier) and is actually eligible for trademark registration and protection.

The searches will also look for cultural and connotation issues. For example, in China the number four represents death. For that reason, companies should ensure that their trademarks do not require modification for cultural and translation issues before brand launch.

Homework Assignment and Action Item

Identify your core marks, key products and priority countries/jurisdictions based upon business factors that are most relevant to your business, which may include some of the factors I have listed above.  Then rank them in order of value to the company’s “bottom line.”

In Post 2, I will outline key filing options for securing global trademark registration for your key brands.

Roger Bora is a former U.S. Trademark Examining Attorney, a partner in a major law firm, the creator of this blog and, most importantly, a husband and a father of an amazing 13-year-old son.