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.

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. 

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.  


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. 

Trademark Titan™ Blog’s Tuesday Tip: Acceptable Trademark Application Specimens of Use – What are Point of Sale Displays?

Acceptable Trademark Application Specimens of Use – What are Point of Sale Displays?

In my blog post here, titled “Trademark Application Specimens of Use: What is an Acceptable Specimen of Use? I mentioned there are instances when trademark applicants may need to rely upon a “point of sale display” to show proper trademark use for products if they don’t use the mark in a traditional sense (i.e., labels affixed to the goods, mark depicted on the goods, mark depicted on packaging).  In those cases, the Applicant may submit, what is known as, a “point of sale display.” Point of sale displays must adhere to strict guidelines, of which I have discussed and outlined below.

What are Point of Sale Displays?

A point of sale display (a/k/a displays associated with the goods) must be associated directly with the goods being offered for sale.  The display must depict the trademark prominently.  Displays associated with the goods comprise various types of point-of-sale materials, such as banners, window displays, menus, product literature used by outside sales representatives and even websites that allow for online orders.

The “displays” must be designed to catch the attention of purchasers and prospective purchasers as an enticement to make a sale.  Furthermore, the display must prominently depict the applied-for mark and associate it with, or relate it to, the goods such that an association of the two is inevitable. 

Important note: Promotional materials, such as brochures and webpages, that simply describe the goods and their characteristics or serve only as advertising literature are not per se “displays,” thus do not qualify as acceptable specimens of use for trademark application and registration purposes (for products). 

In order to rely upon a point of sale display as a trademark application specimen of use for goods, the display must contain each of the following items:

(1) use of the subject trademark;

(2) near a picture of the goods or detailed description of the properties of the goods such buyers know precisely what they are buying; and

(3) specific information on how to order the goods, i.e., telephone number or online shopping cart.

Trademark Manual of Examining Procedure §903 illustrates how the following webpage is an acceptable point of sale display, as it meets all three requirements:

Blog Post Poiint of Sale Display

  • Remember, the display must directly associate the mark and goods such that an association of the mark and goods is inevitable.  In other words, the mark must be perceived as the brand name for the goods.  Using a trademark on the top of a website, for example, that would be perceived as a service mark for online retail store services and not the brand name for the goods in question would not be an acceptable display associated with the goods for trademark application purposes.   
  • The U.S. Patent and Trademark Office may not accept point of sale materials that do not clearly provide information on how to directly place an order.

The next time you decide to launch a new trademark for goods, but have no plans to affix the mark directly to the goods in any manner, you should consider alternative types of specimens of use for securing registration. 

Roger Bora is a former USPTO 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. 

Software, Trademarks and Likelihood of Confusion: How to Respond to a Trademark Office Action

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With the exponential growth of technology and small businesses over the past twenty years, selecting trademarks that are available for use and registration has become a daunting task for brand owners.  That daunting task began during the .com bubble of the late ‘90s and has continued ever since.  Since then, the U.S. Patent and Trademark Office (“USPTO”) has seen an explosion of trademark application filings as the Internet and technology have removed barriers to entry for small businesses.  The proliferation of new companies has resulted in the proliferation of new company names, trademarks and U.S. trademark applications and issued registrations, which have made the brand name selection and registration process somewhat challenging and potentially costly for brand owners.   

One potentially complex aspect of the U.S. trademark selection and protection process is navigating the USPTO registration process, which may entail battling conservative and, in some instances, unreasonable Trademark Examiners that refuse registration.  One ground upon which an Examiner may refuse registration is “likelihood of confusion” or, in other words, that the Applicant’s mark is too similar to a mark (or marks) already listed on the USPTO database. 

To read more about what constitutes “confusingly similar marks” read my post here.

In any trademark infringement and likelihood of confusion analysis, the primary issue is whether a selected mark is likely to cause consumer confusion as to the source of certain products and/or services.  For example, if consumers are familiar with the mark ACE for running shoes and a “new comer” launches the ACE brand of running pants, it’s reasonable to conclude that consumers would be confused as to the source of those goods (they would reasonably believe that the maker of ACE™ running shoes has expanded its product line to include ACE™ running pants).

Unlike the likelihood of confusion analysis for other types of products, such as clothing and office supplies, where the analysis may focus primarily on clothing vs. clothing (generally) and office supplies vs. office supplies (generally), the analysis for software does not focus generally on software vs. software.  Rather, the analysis for software must dive much deeper into the functionality of the software, trade channels, buyers and buyer sophistication.  Accordingly, when a mark for software products is refused registration on the ground the mark is too similar to another mark for software, you should first undertake a full review and analysis of the parties’ respective software products and delineate the differences in their functions, uses, channels of trade and buyers, if possible.

Threading the needleIn many cases, the difference between success and failure with respect to overcoming a trademark application refusal depends upon how well you “thread the needle” and make compelling arguments in favor of registration.  In most cases, it’s not the “beautifully-written” arguments that win, it’s the evidence that supports well-crafted arguments designed to convince the Trademark Examiner that the parties’ respective software products are not of the type that would originate from the same source, and buyers would not reasonably think otherwise, and/or that they would travel in different channels of trade to different classes of buyers.

A big error that attorneys make when responding to trademark application refusals is submitting the “tossed salad” response; making all arguments from all angles to see which argument “sticks” with the Examiner.  Having been a USPTO trademark examining attorney, I can tell you that’s a big mistake and brings the Applicant’s attorney’s credibility into question, which ultimately can hurt the brand owner.  Simply put, if outside counsel does not understand which arguments are compelling for a case and prepares a “tossed-salad–response,” the Trademark Examiner simply cannot take any of the arguments seriously.  For that reason, gathering compelling evidence first and only making relevant arguments is the best strategy for overcoming any likelihood of confusion refusal. 

Software, Trademarks and Likelihood of Confusion: How to Respond to a Trademark Office Action  

Below are examples of arguments and positions when responding to trademark refusals based on likelihood of consumer confusion for marks for software:  

  • The functionality and purpose of Applicant’s software are entirely different and distinct from the functionality and purpose of the software listed in the cited registration.   
  • Applicant’s and cited registrant’s respective software products are used to carry out discrete, specific, and, most importantly, unrelated tasks.    
  • It is well settled that an Examining Attorney must not only consider the similarities of the marks, but must also compare the goods and/or services to determine if they are related such that confusion as to origin is likely. The Examining Attorney must also consider all circumstances surrounding the sale of the goods and/or services, such as the marketing channels and the identity of the prospective purchasers.   
  • Applicant submits herewith information about its products and services at Exhibit A and information about the cited marks at Exhibit B, which clearly delineate the differences between parties’ respective software products.  The materials attached in Exhibit A clarify that Applicant’s software products are software development tools and applications, while Exhibit B clarifies that the cited registrant’s highly technical and sophisticated software is used for data storage systems, which would be used by large commercial and/or government agencies. Applicant’s products and services, however, are used by software developers.  Accordingly, the functionality of the parties’ respective software products is different and their software products would likely travel in different channels of trade to different types of buyers for different uses, which renders consumer confusion unlikely. 
  • Although each of the parties offer software products and/or services, those products and services are used in different market niches and for different applications (data storage systems vs. computer software development tools), which further renders confusion between the parties’ marks unlikely.  Goods may fall under the same general product category but operate in distinct niches.  When two software products are part of distinct sectors of a broad product category, they can be sufficiently unrelated such that consumers are not likely to assume the products originate from the same source. 
  • It is well-settled that the USPTO recognizes the “un-relatedness” of distinct product niches.  A cursory review of the USPTO database indicates that the Office has consistently permitted registrations of identical and near identical marks for computer software as long as the functionality of the software products does not overlap and the software products are not of the type that would typically originate with the same source.  Applicant submits herewith third party registrations for the identical mark for software…  

Before drafting a “creative” and “beautifully-written” response that sounds great and impresses the reader, the attorney should first take a step back, understand the technologies, understand the business sectors at issue and gather compelling relevant evidence that supports the Applicant’s position and then prepare credible arguments in favor of registration.

Trademark Titan Blog’s Tuesday Tip: Trademark Application Specimens of Use: What is an Acceptable Specimen of Use?

Trademark Application Specimens of Use: What is an Acceptable Specimen of Use?

  • For Goods:  In general, an acceptable specimen must show use of the mark affixed to the goods themselves or the packaging for the goods (i.e., labels, tags).  Alternative uses may also be acceptable, such as use of the mark on instruction manuals or product information inserts that travel with the goods and on point of sale displays.  (Stay tuned for an upcoming post on “point of sale displays.”)   
    • It is extremely important to understand that a mark is not considered to be “in use” for trademark application and ICregistration purposes until the goods have been transported in interstate commerce bearing the mark in the ordinary course of trade.  Simply advertising the goods or offering them for sale is not sufficient. 
  • For Services:  In general, an acceptable specimen includes advertising brochures, flyers, and web pages that show use of the mark in connection with the services.  The test employed by the U.S. Patent and Trademark Office is whether the specimen shows use of the mark in a manner that would be perceived by purchasers as identifying the applicant’s services and indicating their source.  For example, a specimen that only shows use of the mark, with no reference to the services, does not support service mark use.  
    • It is extremely important to understand that a mark is not considered to be “in use” for trademark application and registration purposes until the services have been promoted under the mark and the services have been rendered to third parties in the ordinary course of trade.  Simply advertising the services in any manner absent the rendering of those services does not meet the statutory requirement of use.  Furthermore, one must render the services in interstate commerce before a mark can register.