Launching A Global Brand: Eight Essential Considerations

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 mean 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 competitors registering the name in certain countries where the mark will not be in use, 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.

Bill Introduced to Combat Copyright Infringement and Counterfeiting in United States: A Necessary Weapon to Combat Counterfeit Epidemic

On September 20, 2010, it was announced that Senate Judiciary Committee Chairman Patrick Leahy (D-VT) and senior Republican member Orrin Hatch (R-Utah) would introduce the Combating Online Infringement and Counterfeits Act.  This Act would give the U.S. Department of Justice the power to shut down websites and disable domain names that are primarily designed to offer goods or services that are in violation of copyright and/or counterfeit laws, including offering of infringing goods or services themselves, offering access to such goods or services or providing a web site whereon users are directed to infringing goods and services via links.

Under the Act, as currently drafted, courts may issue a temporary restraining order, a preliminary injunction or an injunction against the domain name used by an Internet site dedicated to certain infringing activities. The Attorney General may commence an In Rem action against any domain name subject to the Act. For domain name registrars and registries located in the United States, a domain name will be deemed to have its situs in the judicial district in which (1) the domain name registry or registrar is located, or if there are multiple locations, where the registry operations are performed or (2) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court. If the situs of a domain name is in a foreign jurisdiction, the AG may still bring an action to prevent the importation of infringing goods and services into the United States.

The purpose of this Act is, of course, to reduce the flow of copyright infringing and counterfeit products into U.S. commerce, which may also protect U.S. consumers from infringing and unsafe products, job loss and protect company profits. Sheldon Whitehouse (D-RI) said that “The online sale of stolen intellectual property – whether pirated movies or music or counterfeit electronic goods or pharmaceuticals – hurts American companies, kills American jobs, and puts consumers at risk for defective products.”

This Act is a necessary weapon to combat a counterfeit epidemic that has hit the U.S. shores. To read more about our counterfeit epidemic, you can read my post.

If this Act is enacted, could it be misused to take down legitimate sites owned by Domainers? Unlikley.  However, wouldn’t this Act include Domainer sites used primarily for linking to other sites selling infringing and/or counterfeit goods? Absolutely.