10 Global Trademark Registration Considerations
Brand owners launching new brands nationally and globally have much to consider when it comes to proper trademark selection and global registration protection (and copyright). A misstep out of the gate can cause serious brand damage, soaring registration costs, including litigation that can take years, and uncertainty. Taking the time to plan well in advance of product launch, including engaging experienced trademark/IP counsel is necessary to ensure a smooth global launch.
Before launching a new global brand, brand owners need to conduct trademark clearance searches, not only for the U.S. but also for all countries of interest before product launch. Failure to undertake such pre-clearance activities could result in colossal brand failure in certain regions and countries.
The trademark search and application process includes these 10 global trademark registration considerations:
- Form international strategy FIRST
- Scope of U.S. and global searches
- Costs of searches – what is the budget? Is the budget realistic?
- File trademark applications directly in local jurisdictions?
- File U.S. application and extend to other countries via Madrid claiming Paris priority?
- Combine U.S. application(s), Madrid and local filings?
- File non-U.S. application and extend back to U.S. via Madrid under Paris convention, Section 44(e)?
- File for U.S. copyright registration of artistic logo? Rely upon Berne Convention or also file for copyright registration protection in select countries?
- If trademark pirates own your trademark rights in certain countries, including China, seek copyright registration protection in China for logo mark for defensive purposes while you seek ownership of trademark registration?
- Need to secure registration of certain domain names in English and other languages, including .CN for China?
Brand owners should also ensure that their current IP counsel has an experienced global network of intellectual property associates for handling trademark and copyright registration prosecution and engaging in hand to hand combat against trademark pirates and counterfeiters.
For example, if you are planning to enter the Chinese market, chances are that a trademark pirate may have already taken your most valuable trademark(s). If a pirate is squatting on your mark(s) in China, you will require the assistance of experienced Chinese counsel to commission a use investigation, possibly file a non-use cancellation proceeding against the squatter’s trademark registration(s), possibly file an invalidity action, seek purchase of the squatter’s trademark registration(s) and/or conduct a raid on a counterfeiter’s place of business.
If you are planning for global product launch and have not yet considered these issues, it is time to stop what you are doing, push away from the planning table and use the red telephone – you know, the one connected directly with your trademark attorney.
To listen to a podcast on this topic, click here.
Many cases of third parties registering a company’s trademark in China are the result of trademark pirates; those parties seeking to hold the trademarks of others for ransom. Even worse, these pirates may even sue the rightful trademark owner and user for trademark infringement in China and seek millions of dollars in damages – simply because they filed a trademark application first.