Category: Trademarks

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

How to Protect Trademarks Internationally 
There are 3 Essential Parts

Overview / Introduction of Three-Part Series: How to Protect Trademarks Internationally

In this three-part blog series, I will discuss how to protect trademarks internationally and provide certain 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 whichHow to Protect Trademarks Internationally 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.   How to Protect Trademarks Internationally    

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: How to Protect Trademarks Internationally:

  • 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). 

Once 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,How to Protect Trademarks Internationally 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.
How to Protect Trademarks Internationally – 3 Essential Parts 

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?

Trademark Point of Sale Specimen

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.

Trademark Point of Sale Specimen
U.S. Patent and Trademark Office Campus

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 that 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:

Trademark Point of Sale Specimen

  • 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. 

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