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.

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.  


  • 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. 

The last post* 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.

*To receive an email alert for post 3 (which should be in a few days) and other future posts on this blog, please sign up by entering your email address on the right-hand side of this page.

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.  


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.”

Then, in the next post*, 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.
*To receive an email alert for post 2 (which should be in a few days) and other future posts on this blog, please sign up by entering your email address on the right-hand side of this page.

Trademark Application Denied Based on Likelihood of Confusion: What are “Confusingly Similar Trademarks?”

In the recent U.S. Trademark Trial and Appeal Board decision of In re Straight Up Southern, LLC, the Board once again sends a stinging message to a trademark applicant and upholds the Examining Attorney’s refusal to register the below depicted mark on the ground it is confusingly similar to the registered mark LILA GRACE: 

Lily Grace

Straight Up Southern sought registration of its mark for:

  • ‘short-sleeved or long-sleeved t-shirts; and tank tops,’ in International Class 25. 

The Examining Attorney refused registration under Section 2(d) of the Trademark Act on the ground Applicant’s mark is confusingly similar to the registered mark LILA GRACE for:

  • ‘bathrobes,’ in International Class 25.

In any likelihood of confusion analysis, the primary inquiry is whether consumers would be confused as to the source of the party’s respective goods. 

Common misconception clarified: The issue of “confusingly similar trademarks” is not whether consumers would mistakenly purchase a bathrobe when they intend to purchase a t-shirt; that is not the analysis for “consumer confusion.”  Rather, “consumer confusion” is based on whether consumers would reasonably believe that bathrobes and t-shirts would originate with the same source (i.e., Ralph Lauren brand of t-shirts and bathrobes).  

If consumers would make that reasonable assumption, and if the marks of the parties are similar in terms of sight, sound, meaning and/or connotation (i.e., LILY GRACE vs. LILA GRACE), then we have a potentially serious issue of consumer confusion as to the source of the goods and possible trademark infringement, which may subject the junior user to liability and rebranding.  

Another example of “What are Confusingly Similar Trademarks?” Would consumers reasonably believe that running shoes and running pants originate with the same source?  Of course, they would.  I am quite certain that during the early years of Nike that Nike would not have permitted another party to sell Nikey™ brand of running pants – or any athletic wear – on the basis consumers would be confused as to the source of the parties’ respective goods. 

It is the protection of consumers from being confused or deceived as to the source of goods and services that is the crux of trademark law.  Trademark law’s primary concern is not the trademark owner… it’s protecting consumers, period.

Therefore, when brand owners adopt names that are similar to registered trademarks (i.e., Ovation vs. Avasion) for related products (i.e., skin lotions vs. hair shampoo), there is a high probability that the registered mark will block an application for the new comer’s similar mark on the basis of likelihood of confusion as to the source of the goods.  

Important note: Unregistered, a/k/a common law, marks must also be considered because they may still present barriers to the use and registration of a new comer’s mark and may be used by their owners to block a new mark’s trademark application.  For that reason, searching the U.S. Patent and Trademark Office (“USPTO”) database alone is not enough.

Turning back to the LILY GRACE case, the Board correctly identified the primary principles for refusing registration of Applicant’s mark, including that:

  • when determining whether marks are confusingly similar, the test is not a side-by-side comparison, rather the test is based on the average recollection of marks by consumers;
  • because the registered mark was registered in standard character form, the registered mark is protected in all formats, including the stylization of Applicant’s mark; 
  • although Applicant’s mark contains a design element, the added design is not enough to avoid consumer confusion because consumers call for goods by the word portion of marks;
  • there is no correct pronunciation of a mark and consumers may pronounce a mark differently than intended by the brand owner; 
  • the marks of the parties convey connotations of female names (LILY GRACE vs. LILA GRACE) – thus they convey the same connotations;
  • all of the parties’ respective goods are common apparel and relatively informal and would travel in the same channels of trade; and
  • the Examiner’s introduction of third party online store webpages evidence that it’s common for the same parties to sell all of the parties’ goods under the same trademark.

Some Key Take-A-Ways

  • The parties’ marks and goods/services need not be identical to find trademark infringement
  • Trademark searches must consider “confusingly similar trademarks” and relatedness of products
  • The issue is whether consumers would be confused as to the source of the products – not whether they mistakenly purchase the wrong product (I purchased beer by mistake… I meant to purchase wine!)

USPTO Trademark Search Challenge

Search the USPTO database using the below sample search queries for Applicant’s mark LILY GRACE and see if they find the cited mark LILA GRACE and, more importantly, would have found it on the USPTO database prior to the LILY GRACE name launch and filing (it was already there…).

Click here to access the USPTO search page and then:

  • Scroll down and click: ‘Trademark Electronic Search System (TESS)’
  • Click:Word and/or Design Mark Search (Free Form)
  • Copy and paste each search strategy (one search at a time) in the search window, hit “Submit Query” and then review the results

*lily*[bi,ti] and *grace*[bi,ti] and 025[ic]

*l{“iy”}l*[bi,ti] and *gra{“sc”}*[bi,ti] and 025[ic]

How did they do?  

Alice Corp. Pty. Decision Kills Software Patents: In the Wake of Alice, Many Software Companies Will Need to Bring Their Brands and Trademarks to Life

ThAlice Softwaree recent Supreme Court case of Alice Corp. Pty. v. CLS Bank International, has shaken, but certainly not stirred, the software industry.  Under the Alice decision, software patents that claim abstract ideas and nothing more, including business methods, are likely not valid.  The patents at issue in Alice cover software applications that disclose a scheme for mitigating “settlement risk” by facilitating the exchange of financial obligations between two parties by using a computer system as a third-party intermediary (a/k/a “an escrow agent”).

The court concluded that “the method claims, which merely require generic computer implementation, fail to transform that abstract idea into a patent-eligible invention.”  Accordingly, the Court held that since the claims are drawn to a patent-ineligible abstract idea (e.g., software that carries out the function of an escrow agent), they are not patent eligible under 35 U.S.C. §101 of the Patent Act.

Determining software and other patent eligibility requires a two-step analysis. Step one: identify whether the claims are directed to a patent ineligible concept, such as an abstract idea.  Step two: determine whether the claims contain an inventive step sufficient to transform the abstract idea into something significantly more.  If your software patents or applications do not pass this test, they are likely dead.

The decision in Alice should end the practice of taking abstract ideas from the public domain and simply embedding them within computer software applications and connecting them with generic computer implementation, which has created monopolies where they simply do not belong.  This decision should have the effect of eliminating poorly drafted and poor quality software patents that do not contain inventive steps sufficient to transform abstract ideas.

Alice and other recent decisions rendered by the Supreme Court regarding patent eligibility are likely only the tip of the iceberg.  We will likely see more Supreme Court decisions in the coming years that further limit patent eligibility subject matter and aim to promote free market principles rather than stifle marketplace competition.  Those decisions will also likely continue to erode the rights of and create higher financial barriers for patent trolls.

In the wake of Alice, many owners of software patents are wondering if their patents are valid.  Many of those owners, and owners of pending software patent applications, might be contemplating whether copyright or trade secret protection should be considered if their patented ideas have fallen back into the public domain.  Unfortunately, however, copyright does not protect the functionality of software, thus competitors may simply “draft around” the code, and trade secrets would likely prove difficult to maintain as “secrets” for software.  So what is a company facing this dilemma to do?  Well, if it has not already done so, and if there is no room for substantial improvement eligible for patent protection, it should immediately start building its brand and portfolio of trademarks as it may be only a matter of time before competition creeps into the marketplace with better branding, better trademarks and better management all of which would likely spell doom for the once holder of monopoly power.

Building a powerful brand and trademark portfolio requires thoughtful analysis and consideration and involves many factors, including the following:

I.  Brand and product name selection need not be difficult. Proper consideration of brand names does take time and thought-provoking analysis, however.  Not considering the following four brand name factors could potentially prove fatal for a company’s new product launch.

  • Distinctiveness – Is the name legally protectable?

Terms/names that are considered to be generic for products are never protectable as trademarks. For example, the term for providing online software services should never receive trademark protection. Selecting a generic term as a trademark is brand suicide.

Further, names that merely describe certain attributes of a product will not receive trademark protection upon first use and may never receive trademark protection. Although descriptive terms may become eligible for trademark protection once the “mark” has been put to continuous and substantially exclusive use – that can take years and potentially millions of advertising dollars.

Tip: Select brand names that are legally protectable upon first use.

  • Distinguishable – Is the mark distinguishable from the competition?

Why select a mark that is not distinguishable from the competition? Although a selected mark may be “legally” distinguishable from competitors’ marks, it may still become lost in a noisy marketplace of similar trademarks.

Companies that use marks similar to their competitors’ marks run the risk of losing sales and potentially developing bad reputations that belong to their competitors. For example, if a competitor’s product with an overall similar name receives bad press or even worse kills someone – that publicity may inevitably rub off on those companies with products with similar names. Why take that risk?

Tip: Only select names that are legally protectable and sufficiently distinguishable from the competition.

  • Da Position – Does the company have a positioning strategy?

A brand name should communicate a product’s positioning strategy. Select a name that begins the positioning process. For example, which products have the slogans “Melts in Your Mouth Not in Your Hand” and “The Uncola?” Those slogans positioned their products at the top in their respective categories. Also consider whether a slogan can re-position the competition. Think about how Procter and Gamble re-positioned Listerine with the simple slogan “Medicine Breath.” Re-positioning a competitor with a slogan is one way of gaining market share.

Tip: Select a mark or slogan that will capture the position or niche and then don’t let it go!

  • Da Attributes – What are prospective purchasers looking for?

Selecting a mark that suggests an advantage of a product or a result that consumers want from a product can be a game changer. Rather than look at how a company perceives its own product, a company should look at how consumers already perceive it, then look for the solution in the mind of consumers. Then select a name that reinforces consumers’ perceptions. What do consumers want from car batteries, for example? Of course, they want a long-lasting dependable battery. That’s why the mark “Die Hard” has been a huge success.

Tip: Select marks that convey attributes desired by consumers.

II.  Building Global Trademark Portfolios.  Many factors come into play when launching global brands and brand names. Just ask those that do it for a living!  As for the brand name itself, I’ve listed below some of the factors brand owners should consider well in advance of product launch.  And, yes, I do meanBlog Alice Magnet image well in advance of product launch. Do I need to say that one more time? I know that I do, but I won’t.

Below are eight aspects brand owners should bear in mind when planning a global brand name launch:

1. Does the name have language barrier issues? There have been many stories – some of which may be nothing more than folklore but are nonetheless fun to talk about – of companies launching new brand names to later learn – much to their chagrin – that they convey negative connotations in other languages and cultures. Take, for example, the well-known story of the Chevy Nova. As the story goes, the term NOVA in Spanish means, “won’t go.” Probably not the best name for a vehicle would you say? As the story continues, maybe it was the name itself that explains why the Nova didn’t do so hot in the Spanish-speaking markets.

Companies must also know whether new brand names would have distasteful connotations in other languages and cultures. Another example is the story of PepsiCo launching the slogan “Come Alive with the Pepsi Generation” in China. The story goes that the meaning of the slogan was terribly lost in Chinese translation. Chinese speaking folks translated the slogan to: “Pepsi Brings Your Ancestors Back from the Grave.” Houston, we have a problem.

2. Consider adopting an international icon or logo. One great way of avoiding the language barrier issue is to adopt an international logo design. That way if the name has negative connotations in certain languages or cultures, the brand owner can either drop the name altogether or change the name but still use the universal design logo, which may become recognized across all languages and cultures. Think of the Good Humor® icon.

3. A term that is legally protectable in one country may not be protectable in another. A term or mark that is protectable in the U.S., for example, may not be protectable in the European Union or China. Although U.S. trademark law may render a mark suggestive, thus legally protectable upon first use in the U.S., EU or Chinese trademark laws may render the same term or mark as being non-distinctive, thus unprotectable. If there are any doubts as to a selected mark’s distinctiveness in a certain jurisdiction, an inquiry as to the mark’s distinctiveness should be made with foreign counsel. If it’s too late, and the mark has already been launched, one way to avoid the non-distinctiveness refusal in certain countries is to simply add a design element to the word mark.

4. Budget. Budget. Budget. Consider the costs of clearing and protecting selected marks in certain jurisdictions and countries. Although the cost to clear marks in all selected countries and jurisdictions may be cost prohibitive, it still makes sense to clear marks in those top priority countries/jurisdictions. Those top” countries/jurisdictions are those that are expected to result in the majority of sales. Also, the costs to secure trademark registration protection on a global basis add up quickly. The best strategy is to know the marketing strategy and only seek protection in those jurisdictions that correspond with that strategy. If money is not an issue, and the brand owner fears that competitors might register the name in certain countries where the mark will not be used, seeking defensive registrations may be part of the strategy.

5. Clearing and registering a mark in the U.S. does not mean the mark is clear to use in Canada, Mexico or any other country. Remember that trademark laws are country specific. A U.S. trademark registration does not generally grant the right to use the mark in any other country.

6. Does the brand owner want/need to reserve country code top-level domain (“ccTLD”) names? If a company wants to use ccTLDs (i.e., .CN for China or .JP for Japan), it should ensure that the domain names are available during the clearance stage and, if they are, reserve them immediately.

7. Where should trademark registration be sought? Deciding where to seek registration is an important aspect of the protection process. Due to cost barriers, companies should consider protecting marks in stages, which may mean over a certain number of years. Start with the top priority jurisdictions, including those jurisdictions where the majority of sales are expected to take place, customers are located, licensees are located, advertising is planned and manufacturing and distribution will take place. The lower priority countries are those of which sales are not expected to be of any significance for a few years. Protecting the name in the lower priority countries can simply be staged over coming years in an effort to spread out costs. Companies should be mindful of the brand expansion strategy, which could mean rolling out the product in certain countries over a 2, 3 or even 5 year period. It’s generally highly recommended that the trademark filings stay ahead of the product rollout strategy.

8. Trademark application filing strategy: National registrations, Community Trademark, International Registration? How about a combination of all three? There are a number of factors to consider when planning a filing strategy. Considerations should include national filings and their prosecution costs, vulnerability of home country applications or registrations on which International Applications are filed via the Madrid Protocol, the number of jurisdictions in which protection is sought, which countries or jurisdictions belong to the Madrid Protocol, first-to-file countries, distinctiveness of marks and potential for oppositions to registration in certain jurisdictions. There is not a “one plan fits all” strategy. Strategies should be considered on a case-by-case basis. Whether to use the Madrid Protocol and/or Community Trademark filing mechanisms or other jurisdictional filing mechanisms or a national application filing strategy or a combination of those options should be fully considered well in advance of product launch.

I cannot stress more that sufficient time should be allotted for planning a global filing strategy. In some instances, the time needed to clear marks for a global launch can take weeks and possibly months. And that’s if the first choice is available. So take some time out of your busy day of planning the branding strategy and give ample time to the planning of the brand name protection strategy – you will probably need it. Trust me.

Now that Alice has placed many software patent holders (and applicants) on notice that their software patents are invalid, it is time for those parties to build, if they have not already done so, strong and valuable national and/or global brands.

%d bloggers like this: