continued from part 3

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.

If your company conducts individual searches in individual countries, and it plans to apply in a number of countries, it has been my experience that the multiple search results become overwhelming. In addition, it is going to be very difficult, if not impossible, to select a mark that is going to be clear in every country anyway. It is imperative, therefore, to understand from the outset that anytime a company launches a worldwide branding initiative, there is going to be a degree of business risk that the mark is not protectable in every country of interest. You are going to get back some searches that have negative opinions but if those opinions are not going to really affect your overall plan, then why pay for them and have them conducted in the first place? That is why I do not find that type of individual multiple country searching to be particularly useful. If there is one country in particular that really matters to your company, however, then by all means do a country specific search in that country. Otherwise, if your company is launching a worldwide brand, it may make more sense to conduct the initial searching I recommend and then proceeding with your filing.

In addition, if your company is launching a worldwide branding project, your company should consider synchronizing its filings, i.e., your company does not want to apply to register its mark first in the U.S., and then waiting a few days to file in foreign jurisdictions. Companies may be monitoring your company’s filings. If a competitors sees that your company filed in the U.S. it may go ahead and file in a foreign country that does not care about bona fide intent to use and instead, lets anyone file. These third parties could be competitors of your company’s or they may be squatters that want to simply hold your company’s new mark hostage for a nice payoff in a foreign jurisdiction. Instead, your company is going to want to apply to register its new mark at the same time around the world. In order to successfully accomplish this goal, give your foreign counsel as much lead time as possible. Send them the filing particulars, i.e., the mark, the goods/services, the applicant’s information, but give them three days notice before filing. This will make up for most national holidays, time differences, etc. It also gives your foreign counsel an opportunity to ask you questions or make country-specific recommendations. Also, it gives your foreign counsel an opportunity to send you Powers of Attorney that are often required in connection with a foreign trademark application, for execution prior to filing. By getting the Powers of Attorney to the foreign counsel prior to filing, you can save time, and most importantly, often save money in not having to file the Powers of Attorney late. The more lead time you can give your foreign counsel, the more coordinated your filing effort is going to be.

Lead time is one of the best ways to save your company money in general. The further your company can plan ahead, the better. By doing so, your company will more than likely save money on attorney fees. It also

CONTINUED ….. Part 5

Suggestions for a Successful and Affordable International Branding Campaign

by  Scott Slavick, Brinks Hofer Gilson & Lione