It s (Not) a Small World: Global Trademark Strategies to Protect Your Brand Cynthia Walden Lisa Martens Jan Zecher April 2, 2014
Overview Housekeeping CLE Contact: Makarevich@fr.com Questions Materials post webinar Next webinar June 4 th 2
Agenda @FishRichardson Importance of a Global Trademark Strategy Prioritizing Where to File Timing Considerations Method of Filing Best Practices for Global Trademark Enforcement 3
Importance of a Global Strategy It is a global marketplace Rights are recognized on a country by country basis In most countries outside the United States, registration is required in order to claim and enforce trademark ownership Developing a global strategy will save you money Sticking to a brand strategy will help you build and maintain strong brands 4
Developing a Global Strategy Legal and Marketing work together to develop strategy for new marks Process for selection of marks Develop priorities (names of key products, sub brands, etc.) When to conduct clearance searching and how in depth What marks to file for Work with internal business and marketing teams to ensure a consistent approach is taken to selecting and protecting marks 5
Establish Clearance Protocols Establish internal intake forms and procedures (mark, products, where made/sold, when launch, plan B?) Develop strategy for clearance searches Who (only some offices search; citation v. information) What (trademarks, trade names, domains, connotation) Where (registers v. use on the market) How thorough (identical v. almost identical v. similar) Staggered approach (get iceberg out little by little) Follow up searches (blind spot) 6
When Should You File? When can/should you file for protection? For trademarks, you should file as soon as a mark has been adopted for a new product 7
Prioritizing Where to File Audit your intellectual property rights and identify your company s most important assets This includes your house mark and trademarks for all of your key products It is important to register marks where you want to be able to enforce your rights Register trademarks in countries where you manufacture and sell your products and in countries where counterfeiting is prevalent 8
Budgeting Cost considerations Prioritize by filing applications to register most important assets first File in most important countries first (e.g., US, EU, Canada, China, Japan, Brazil) Worldwide enforcement is prohibitively expensive o Decide which countries provide the most leverage 9
Filing Strategies File quickly Most of the world (outside of United States) is first to file File before discussing business arrangements with potential partners Some recommend filing as soon as your knockout search is conducted, before full assessment, to obtain a priority date File smartly, taking advantage of priority/seniority where possible National v. International Regional applications (CTM, OAPI) 10
U.S. Filings Trademarks in the United States are entitled to common law protection, but registering your trademarks with the USPTO provides additional benefits and remedies Goods/services must be identified with specificity but ideally with some wiggle room Filing basis (Intent to Use v. Use Based) Use required for registration and maintenance Word mark v. design mark
Ins and Outs of Priority Claim filing date of first application ( priority ) for further filings in other countries within six months Priority right covers mark and goods and services as initially filed Fate of first application irrelevant Does not have to be in your home jurisdiction, can be assigned Based on international agreements, but national law Full identity Partial priority claim Multiple priority claim Add goods or services Secondary priority right 12
International Trademarks (Madrid Protocol) Based on home country registration, filed via home office, processed by international office (WIPO) forwarded to designated foreign offices Advantages o Save on costs filings, renewals, recordals o Streamlined Disadvantages o Depends on home registration for 5 years = risk of central attack in home country o Only goods, services covered by home registration o Slower, shorter deadlines, not available in all countries (e.g., Brazil) 13
Community Trademarks v. National Filings Advantages Save on costs for filings, renewals, recordals Streamlined Use in parts of the EU sufficient to keep enforceable everywhere EU wide jurisdiction, decisions, customs action v. national Grows with EU, allows to claim seniorities of national registrations Disadvantages Has to be non descriptive, distinctive in all EU languages Can be opposed based on rights in one EU jurisdiction Can be cancelled very cost efficiently in office proceedings
High Risk Countries China Japan South Korea Taiwan Russia Registration of marks in foreign (non Latin) characters Registration of copyright for logos Proactive registration covering broader scope/subclasses 15
Asia Applications on the Rise Trademark Enforcement Trademark Applications 16
Global Enforcement Strategy Watching Prioritize issues Prioritize countries Develop standard position on when/how to pursue infringers Develop standard terms for settlement agreements 17
Trademark Enforcement, United States Trademark Trial and Appeal Board ( TTAB ) Opposition actions Cancellation actions Federal Courts Causes of action Available remedies International Trade Commission ( ITC ) 18
Trademark Enforcement, Europe Trademark offices Only to keep the registers clean Office proceedings not always available (court action necessary) No damage awards, only limited cost awards National courts Local law, local counsel, local language Germany, Netherlands, UK are venues of choice EU wide jurisdiction, decisions only when based on CMTRs Customs No official fees, no security bonds, EU wide decisions when based on CTMRs (national offices compete, free translation of evidence 19
Global Strategy Take-Aways Develop protocols for adoption and clearance of marks Use standard identifications Prioritize filings by importance of mark and country File via Madrid Protocol and take advantage of priority when possible Prioritize enforcement efforts based on importance of mark, nature of harm and relief sought 20
Additional Considerations Develop guidelines for proper use and marking Educate and audit Customs registration and enforcement Licensing/distribution agreements 21
Questions? 22
Thank You! Cynthia Walden Boston walden@fr.com 617 956 5928 Lisa Martens Southern California martens@fr.com 858 678 4729 Jan Zecher Munich zecher@fr.com +49 89 710 410 2 0 Please send your NY CLE forms or questions about the webinar to Ellen at makarevich@fr.com. A replay of the webinar will be available for viewing at www.fr.com
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