.:Interletssa:.

I. INTRODUCTION

A benefit of the international treaties and laws regulating trademark registrations is the flexibility they provide. In the same vein, it may be hard for a non expert to determine which of the filing alternatives are best suited for their business objectives in terms of timing, likelihood of obtaining trademark registrations, and cost. I provide below an example of the decisional parameters and process based upon some hypothetical trademarks for a hypothetical product.

Assume you want to brand a new animal food product in one goods classification. You have a set of countries in which you hope to do business, and some tentative choices for the trademark for the new product. The target countries, are: U.S., Mexico, Argentina, Chile, Brazil, Ecuador, Venezuela, Columbia Italy, Spain, Greece, Germany China, India, Taiwan, Thailand, Malaysia, and Singapore. The tentative trademark is one or more of the following: AnimalFood, Bird2Eat and ChuppK.

First note that AnimalFood, Bird2Eat and ChuppK range from merely descriptive of the product (”AnimalFood”) to arbitrary (”ChuppK”). Generally speaking, the chance of obtaining a registered trademark for an arbitrary mark is much higher than for a merely descriptive mark.

II. ALTERNATIVE FILING MECHANISMS

As to the filing mechanisms, the options include direct national filings, Paris Convention priority, Madrid Protocol, and Community TradeMark (CTM) for European countries.

I would not file under the Madrid Protocol for two main reasons. First, eleven of the eighteen countries are not members of the Madrid Protocol. Second, for the first five years after filing an international registration (aka Madrid), the international registration is dependent on the basic application (filed, for example, in the U.S.). This means that, during the first five years of the life of the international registration, if the U.S. basic application or registration is refused, withdrawn, cancelled or restricted, in whole or in part, then the international application will be restricted or cancelled to the same extent as the basic application. Of course, whether to use Madrid depends in part on the likelihood of problems with the basic application. In addition, following publication of the basic application, there may be a third party challenge, adding uncertainty of obtaining foreign registration based upon the basic U.S. application. In our example, it is very likely that AnimalFood would not issue in the US, there is a chance that Bird2Eat, would not issue in the U.S., and there is a lesser chance that ChuppK would not issue in the U.S.

I would file a U.S. application, and then claim the Paris priority right to that application in subsequent foreign filings for the same mark. Paris provides for a priority claim without being dependent upon issuance of the U.S. application. It would also defer filing the foreign marks by six months from the date of the U.S. filing, which would provide for six additional months to decide the other countries in which to file the mark, and for which mark or marks to file. Another option would be further deferring filings in certain countries beyond six months from the U.S. filing date, thereby abandoning the Paris priority, until finally deciding in which countries the new product is to be sold.

In most filing scenarios, I would file a CTM application instead of a national application for the several desired European countries. The benefit of the CTM is that it covers all EU countries for a cost not more than that of prosecuting 3 or 4 national trademark applications. In this example, a CTM application would cover Italy, Spain, Greece, and Germany as well as all other EU countries (at an approximate cost $6000 for filing, prosecution, and issuance).

III. ESTIMATES OF SUCCESS, COSTS

As to likelihood of success, costs, and timing, here are my estimates for each mark and each country, as of this year, 2007.

AnimalFood

In the U.S., I would estimate the likelihood of success as being less than 20 percent (because the mark would be rejected as merely descriptive). The estimated U.S. cost for prosecution is $2500: $275 USPTO charges, $500 firm docketing fees (add $400 if mark not in use at time of filing); miscellaneous processing fees – mostly due to responding to office actions – roughly $1500 due to anticipated office actions. This assumes no appeal and no third party challenge. The estimated prosecution time is 1-2 years, depending primarily on the promptness of responses to USPTO communications.

The chance of success in non English language countries would be higher for “AnimalFood” since that concatenation of English words may not be as descriptive of the product in the foreign language; this issue depends in part upon how prevalent English is in any particular country.

Foreign national trademark applications take about 1-3 years to prosecute to issuance. Total costs (which includes costs for government fees, attorney fees, and our foreign agent’s fees) including issuance run $2000-$4000 per country, again assuming no adverse decisions, appeals, or third party challenges.

Thus, the total costs for prosecuting “AnimalFood” in the U.S. and the 17 listed foreign countries, over the next 3 years, would be about $50,000, which includes a lower cost per application for the European marks due to the CTM filing and assumes no appeal or third party challenge. For budgeting purposes, assume half of those costs will be incurred in the first few months of filing due to the docketing and filing costs and fees.

Keep in mind that a registered U.S. trademark requires post-issuance action to maintain the mark’s rights. These include filings showing actual use in commerce and an optional filing of an affidavit of incontestibility five years after registration; and filings showing use in commerce every 10 years thereafter. The costs for each such filing in today’s dollars is about $500. In addition, I would anticipate maintenance fees every 10 years to be roughly $500-$1000 in each foreign country.

Bird2Eat

In the U.S., I would estimate the likelihood of success as being roughly 50-75 percent (somewhat descriptive, but depending on circumstances surrounding mark, may be lower due to added significance of the number 2 - for example, if there are 2 key ingredients or benefits to the product). The estimated U.S. cost for prosecution is $2500: $275 USPTO charges, $500 firm docketing fees (add $400 if mark not in use at time of filing); miscellaneous processing fees – mostly due to responding to office actions – roughly $1000 due to anticipated office actions. This assumes no appeal or third party challenge. The estimated prosecution time is 1-1.5 years, depending on promptness of responses to requests for instruction.

The chance of success in non English language countries would be about 75 percent since “Bird2Eat” would not be a merely descriptive term.

ChuppK

In the U.S., I would estimate the likelihood of success as being roughly 75-90 percent (arbitrary; and a brief search found no confusingly similar marks). The estimated U.S. cost for prosecution is $1500: $275 USPTO charges, $500 firm docketing fees (add $400 if mark not in use at time of filing); miscellaneous processing fees – mostly due to responding to office actions – roughly $500 due to anticipated office actions. This assumes no appeal or third party challenge. The estimated prosecution time is 1-1.5 years, depending on promptness of responses to requests for instruction.

The chance of success in non English language countries would also be roughly 75-90 percent since “ChuppK” is arbitrary and also is unlikely to be contested.

In summary, trademark filing involves weighing numerous financial and legal options and there are several filing strategies one can take. These strategies can change based on an examiner’s adverse ruling or on a client’s budget shortfall or windfall. Each proposed international branding campaign should be reviewed up front for chance of success, costs, and timing to ensure that your client can make an informed business decision.

Bruce Margulies Attorney Email address: bmargulies at Neifeld dot com Education J.D. North Carolina Central University Managing editor, Law Review 2001 M.B.A. University of Maryland 1990 B.S. University of Maryland Baltimore County (Information Systems Management) 1987 Experience Neifeld IP Law, PC – 2002 Poe, Hoof & Reinhardt (law clerk) – 2000-2001 North Carolina Central University (patent law clerk) - 2000-2001 Maupin Taylor & Ellis PA (legal assistant) – 1999 Experience in business method patent technologies and litigation support. Admitted to practice before the Courts of the State of Maryland and the District of Columbia.

Tags :Branding, International, Trademark, Trademarks

In the past, many brand owners, both small as well as corporate sometimes did not consider much the immense importance of protecting someone’s brand overseas. The simple key should be “IP strategy”. If a strategic decision has been taken to go and expand the business and open new locations, one of the first things that should be done is to protect your brand. It has happened in the past that brand owners, went overseas, spent money on finding a local distributor, in opening new businesses and then discovered that their mark cannot be protected or has limited protection, when for example someone else has filed for a trademark first, and gained enough goodwill to bar their current application. Therefore, the importance of registering a trademark while planning ahead cannot be over rated.

When filing for a trademark in Israel, one should be aware that Israeli Law currently operates differently than the US trademark Law, whereas in Israel operates on a Mono-Class system , as opposed to the Multi-Class system that operates under US trademark Law.

A mono-class system means that when filing for one trademark in several classes, applicant will have to file several applications for the same trademark. On the financial aspect, this usually will mean that a bigger budget will be needed as each class is considered as one new application, and on the procedural aspect, each application will be allocated a different serial number, sometimes a different filing date and many times be examined separately.

Although one cannot generalize on all legal practitioners, some, do offer a reduced fee when filing for one trademark in different classes.

One more fact, applicant should be aware of, is that Israel is a member of the Paris Convention, by which any applicant who filed an application on an another member state, may file for the same application in Israel provided that the filed application be on the same class number, the same list of goods and/or services, for the same mark and that the Israeli application was filed within 6 months from the earlier priority date. This will allow the applicant to file the trademark in Israel claiming priority on the previously filed application date.

More factors need to be considered when filing for a trademark in Israel and it will be further detailed on the following article, published on this subject.

Although the data provided on this article should be error free and accurate, it can under no circumstances be considered as a legal advice and one should contact a lawyer on a case-by case advice.

Adv. Naim manages the Trademark Deprtment at the law firm of Daniel Freimann & Co., one of the oldest law firms in Israel specializing in intellectual property and internet law. Our firm serves its clients on proceedings in front of the Regsitrar of Patents, Designs and Trademarks as well as in front of courts on all instances

Tags :  Attorney, Filing, Intellectual Property, Ip, Israel, Lawyer, Trademarks

Though the United States media have published a number of stories deriding China’s intellectual property protection, those articles nearly always neglect to mention that in most instances involving trademarks, the fault lies with the foreign company, not with Chinese enforcement. The reality is that many foreign companies fail to register their trademarks in China and thus have no real right to complain about any “infringement” there. To expect protection, foreign companies must register their trademarks in China and the prudent company does this before going in.

There are actually a number of people in China who make a living by usurping foreign trademarks and then selling a license to that trademark to the original license holder. Once one comes to grip with the fact that China, like most of the rest of the world is a “first to file” country, one can understand how easy this usurpation is, and also, how easy it is to prevent it.

The fact that you are manufacturing your product in China just for export does not in any way minimize the need for you to protect your trademark. Once someone registers “your” trademark in China, they have the power to stop your goods at the border and prevent them from leaving China.

The key to protecting a trademark in China is actually very simple: register it in China.

China’s trademark requirements are actually quite similar to those in most other countries. The trademark must not conflict with an existing Chinese trademark and it must be distinctive. China allows for registration of all marks for goods, services, collective marks and certification marks.

China’s Trademark Office maintains a centralized database of all registered and applied-for trademarks. Trademark applications that pass a preliminary screening are published by the Trademark Office and subject to a three month period for objection. If there are no objections within this three month period, or if the Chinese Trademark Office rejects the objections as frivolous, the trademark is registered. If the Chinese Trademark Office supports an objection, it will deny the application. Denied applications may be appealed to the State Administration of Industry and Commerce Trademark Review & Approval Board and then to the People’s Court. Based on our experience, objections to trademarks are rare.A Chinese trademark gives foreign companies a surprising amount of protection in China. If a foreign company learns that its trademark is being infringed in China, it has a number of actions available to it.

We usually advise our clients to pursue a multi-pronged approach to protect an infringed upon trademark and to pursue the infringer. The foreign trademark owner should usually file a lawsuit against the infringer, seeking damages and an injunction stopping the infringer from continuing to sell the infringing goods. The Chinese courts in the more commercialized regions are actually quite willing to enforce China’s trademark laws, even for foreign companies. Trademark infringement is a crime in China. For serious cases of infringement, a complaint to the office of the public prosecutor can often result in a criminal prosecution against the infringer. The Chinese police will close the offending operation and seize the counterfeit goods. The courts are authorized to impose both fines and imprisonment. Finally, if the counterfeit goods are destined for export, a notice to the Chinese customs authorities will prevent export of the counterfeit goods.

Tags : China Law, China Legal, China Trademarks, Trademarks

Adding on to the number of lawsuits involving search ads, 1-800-Contacts has recently filed a lawsuit in federal court against LensWorld for purchasing search links triggered by the term “1-800-contacts.” The company which has since brought up several other similar cases, says it’s trying to guard against confusion which might lead consumers into thinking there is an affiliation between 1-800-Contacts and these other companies.

1-800-Contacts, whose headquarters are resided in Draper, Utah, is among several other Utah lawsuits filed lately involving the use of trademarked terms in online advertising such as search ads. Last year, Utah passed a legislation that makes it illegal to use other companies’ trademarked terms to trigger ads, but this law has yet to take effect.

1-800-Contacts has lost a related case in 2005, when a federal appellate court ruled that the retailer’s competitors could legally serve pop-up ads to consumers who had typed “1800contacts” into their internet browsers.

In 2004, Google prevailed over insurance Giant Gecico after trial when a federal district court judge ruled that Geico hadn’t prove that consumers were confused when they were shown links to Geico’s competitors after typing “Gecio” into the search box.

Google also won a major case brought up by computer repair company, Rescuecom in 2006 when a federal district court dismissed the case before trial, ruling that competitors who triggered keyword ads with the term “Rescuecom” does not violate the trademark law. Currently a appeal has been made and this case is still pending.

Stakes are high as a final ruling against the defense in any keyword bidding lawsuit could potentially cause an impact on the entire search marketing field. Trademark infringement on search ads will not only affect the purchaser, but also those companies selling the ads such as Google and Yahoo!. “That would have a noticeable effect on the online advertising industry.” says Eric Goldman, director of the High Tech Law Institute at Santa Clara University School of Law.

Tags : Search Engine Marketing, SEO, Trademark, Trademarks