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.

In many foreign countries, in contrast, an applicant can apply for an entire International Class heading of goods regardless of its intent to use that mark in connection with many of the listed goods. This means, that for the same computer software, an trademark applicant could apply for all of the following in International Class 9: “Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.”

Many companies like this idea because they think, and they are correct, that it broadens their protection in those foreign countries because they are not limited to computer software for use in corporate accounting but instead can register their mark for all of the above-referenced goods, even fire-extinguishing apparatus, for example. However, what those same happy companies often fail to realize at the time of filing is that by applying for such a broad identification of goods, they may be unintentionally encouraging third parties to oppose their applications.

For example, if Company A in reality produces computer software for use in corporate accounting but applies to register its mark for all of the Class 9 goods listed above, Company A may get opposed by another computer software company, Company B, which sells computer software for use in connection with educational grade keeping. In reality, these two companies may be able to easily co-exist, but because Company A applied so broadly, Company B may feel compelled to contact Company A, and negotiate a restriction to Company A’s identification of goods, or worse, refuse to negotiate and instead, file an opposition, proceed to litigation, etc. Company A would then be forced to pay additional attorneys’ fees, litigation fees, try to negotiate a settlement to a dispute that really never should have happened in the first place because the two companies are so different in what they actually do but whose identifications of goods overlap because Company A applied to register its mark for more goods than Company A really cared about protecting. This happens all the time.

To avoid it, especially, if your company plans to apply to register its mark in a number of countries at once, and the application fees are costing a great deal of money, your company may want to specify the exact goods of interest to it, as if it was applying to register the mark in the U.S., even if the particular foreign country or countries allows for a much broader identification of goods. We have advised numerous clients to proceed accordingly and there is no telling how many oppositions/negotiations those clients were able to avoid by being more specific than they had to be about the goods of interest to those companies.

Next, I would suggest not

CONTINUED ….. Part 3

Suggestions for a Successful and Affordable International Branding Campaign

by  Scott Slavick, Brinks Hofer Gilson & Lione