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In today’s difficult economic environment, if your company is fortunate enough to be embarking on a large international trademark filing campaign, you should consider each of the following suggestions in order to make that filing as successful and affordable as possible. If you follow these suggestions, you will lower your prosecution costs while at the same time effectively broadening the scope of your trademark protection worldwide.

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go outside to try to think of a new brand.

After you have selected the mark, you also need to decide on the goods and services to apply for in connection with that new mark. Oftentimes, when a U.S. company applies for a trademark internationally, it is thrilled to learn that many foreign countries allow for a much broader identification of goods than the United States Patent and Trademark Office allows. For example, in the U.S. a trademark applicant may have to specify the exact type of computer software that it is selling, by explaining what the software does or who would use it or what industries it would appeal to. This can feel quite limiting to a U.S. company, but it is the accepted practice before the USPTO.

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your company’s proposed mark is registrable in the U.S. Plus, a full U.S. trademark search covers domain names and the internet. If a full U.S. trademark search is clear, then I suggest conducting a worldwide identical screening search, another type of search offered by Thomson Compumark. The worldwide identical screening search will locate identical marks around the world. Reviewing a worldwide identical screening search will alert you to any obvious potential problems on a worldwide basis.

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blindly filing under the Madrid Protocol. The U.S. acceded to the Madrid Protocol several years ago and without going into all the specifics about it, the Protocol allows an applicant to file one centralized electronic filing to cover a number of countries, often at a discount on the governmental filing fees. However, because each member country of the Protocol can set its own governmental filing fees, the Protocol only tends to provide discounts in more out of the way countries. It does not really provide cost savings in many of the most popular countries because those countries do not give a discount to Protocol filers. For example, it doesn’t save you money in the US or any of the European Union countries.

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saves money on searching fees. It helps provide time for strategy meetings on how to file and where to file and for what goods/services to file. Lead time is typically something that cannot be added, but if it can, or if your company is in a budget/cost savings situation, which many companies find themselves in today’s market, then give as much lead time as possible. If your company does, your company is going to save money.

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