It’s (Not) a Small World: Global Trademark Strategies to ... · April 2, 2014 It’s (Not) a...
Transcript of It’s (Not) a Small World: Global Trademark Strategies to ... · April 2, 2014 It’s (Not) a...
April 2, 2014
It’s (Not) a Small World: Global Trademark
Strategies to Protect Your Brand
Cynthia WaldenLisa Martens
Jan Zecher
• Housekeeping CLE Contact: [email protected]
Questions Materials post‐webinar
• #fishwebinar• Next webinar – June 4th
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Overview
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• Importance of a Global Trademark Strategy• Prioritizing Where to File• Timing Considerations• Method of Filing• Best Practices for Global Trademark Enforcement
Agenda
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Importance of a Global Strategy
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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
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• 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
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Developing a Global Strategy
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• 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)
Establish Clearance Protocols
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• When can/should you file for protection? For trademarks, you should file as soon as a mark has been adopted for a new product
When Should You File?
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• 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
Prioritizing Where to File
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• 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 expensiveoDecide which countries provide the most leverage
Budgeting
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• 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)
Filing Strategies
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• 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
U.S. Filings
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• 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
Ins and Outs of Priority
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• 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
Disadvantageso Depends on home registration for 5 years = risk of “central attack” in home country
o Only goods, services covered by home registrationo Slower, shorter deadlines, not available in all countries (e.g., Brazil)
International Trademarks (Madrid Protocol)
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• 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
Community Trademarks v. National Filings
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Registration of marks in foreign (non‐Latin) characters Registration of copyright for logos Proactive registration covering broader scope/sub‐classes
High Risk Countries
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China Japan South Korea Taiwan Russia
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Global Enforcement Strategy
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Watching Prioritize issues Prioritize countries
Develop standard position on when/how to
pursue infringers
Develop standard terms for settlement agreements
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• Trademark Trial and Appeal Board (“TTAB”) Opposition actions Cancellation actions
• Federal Courts Causes of action Available remedies
• International Trade Commission (“ITC”)
Trademark Enforcement, United States
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#fishwebinar• 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
Trademark Enforcement, Europe
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#fishwebinar• 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
Global Strategy Take-Aways
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• Develop guidelines for proper use and marking
• Educate and audit
• Customs registration and enforcement
• Licensing/distribution agreements
Additional Considerations
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Thank You!
Please send your NY CLE forms or questions about the webinar to Ellen at [email protected].
A replay of the webinar will be available for viewing at www.fr.com
Cynthia WaldenBoston
[email protected]‐956‐5928
Lisa MartensSouthern [email protected]‐678‐4729
Jan ZecherMunich
[email protected]+49 89 710 410 2‐0
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