Continued from Part 4

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.

If your company already has people on the ground in your company’s foreign countries of interest, for example, your company should consider using them to help it investigate its potential new mark. These people know the on the ground competitors. They know if marks are potential problems. They can be very helpful. Make sure, if confidentiality is important, however, that you only notify people that can be trusted to maintain that confidentiality. Oftentimes, for example, when it comes to counterfeiting, it is a company’s own manufacturers that are in cahoots with the counterfeiters. You have heard the stories of a company’s own manufacturers sending stuff out the back door, and those are not the people that you want to trust with information on your soon-to-be-launched new name. If you do, you could mysteriously find some third party applying to register your new name before you do.

Also, make sure you have the correct applicant. Changing names or assigning applications can become very costly. If your company is setting up an IP holding company in conjunction with its new international filing, do it before you apply to register your company’s new mark, if possible. Sometimes this is unavoidable. If your company wants to file everywhere at the same time and wants it to be secret and wants the new name to be the new name of the entity applying to register it, that could be an issue because your company may not want to incorporate the new entity until after the applications are filed. But this could be a very costly delay of a day because your company is probably going to have to assign the applications from the applying-for entity to the newly incorporated entity. If this is the case, it would be one reason to use the Protocol because recording name changes/assignments is much less expensive under the Protocol than if your company files each application individually per country.

If you follow these strategies, your company’s next international trademark filing will go much more smoothly and will be much more cost effective and those are two things that any corporate president or general counsel will be very happy about in these trying economic times.

Suggestions for a Successful and Affordable International Branding Campaign

by  Scott Slavick, Brinks Hofer Gilson & Lione