Husch Blackwell Sanders Welsh & Katz provides the following TIPS for effective global searching and filing strategies, cost reductions and efficiencies in selection of and communication with international agents around the world.
Determine exactly which trademark registrations your company currently has including coverage, jurisdiction, ownership, due dates and international agents.
Identify which of your trademarks are considered "key" or important marks. These marks will be treated as priorities throughout your portfolio, while other marks may be deemed less strategic or valuable and might no longer require maintenance. This evaluation – often done in-house with business unit leaders and legal staff -- helps streamline your budget – and your attention – to the marks with the greatest current and future value to your company.
Maintain consistency with your marks – from jurisdiction-to-jurisdiction and to the goods and services protected. Too many companies do not register their marks in a consistent manner and that leads to issues and legal costs that could be avoided.
Consolidate all marks in a specific jurisdiction with one attorney or agent. This saves money and administrative time.
Organization is key. Maintain all information on your trademarks in a high-quality, searchable database which can be accessed both by outside counsel and internal audiences. This ensures that necessary information, including due dates, is provided in a timely manner so that appropriate actions and/or decisions may be made for all international marks.
Determine which jurisdictions are important to your company now – or might be in the future – and seek protection for your key marks. This determination should be made not only on the basis of where you currently have activity but where you expect activity to grow in the future or in the case of certain jurisdictions where trademark piracy tends to exist which would require registrations of a defensive nature. You also might want to develop criteria that would "trigger" more extensive protection within jurisdictions (e.g., Internet sales, but no physical presence in a jurisdiction might get level "D" protection, while the hiring of your first agent in a specific jurisdiction might get level "B" protection).
Prioritize those marks that should be filed as soon as possible, those which it would be better to file soon and those which can clearly be delayed. This evaluation process helps streamline costs and places priority on your key marks. As additional funds become available to invest in IP protection, you can continue to increase the geographic scope of protection for your key marks.
In order to get the most extensive, basic protection at the lowest cost, file in jurisdictions covered by treaties (e.g., Community Trademarks, the Madrid Protocol).
Whenever you file for basic protection in a jurisdiction, it's a good idea to also file for domain name protection. Getting basic domain name protection can save you a lot of business disruption later.
As you build your international brand and receive inquiries for employment, franchising/ licensing, make sure you file to get basic protection in these jurisdictions for defensive purposes.
Use attorneys who are capable not only of handling the registration process, but also of handling any disputes that may be necessary, including handling litigation. Some clients prefer to use agents. That's fine, but if litigation becomes necessary, companies will pay a second time to get an attorney "up to speed" on their matter.
Reporting should be provided on no less than a quarterly basis. For many companies, they want even more frequent reporting.
Actively police your marks. Developing an international reputation as being protective of your IP assets can reduce your company's long-term trademark protection costs. Early communication with potential infringers will tend to cut down on the need for expensive litigation. As part of this process, initiate a worldwide watch on key marks so your most valuable assets receive the most attention and protection.
Initiate a watch on the use of your company's key marks in cyberspace, not only as domain names, but also for uses on websites. Again, early communication with potential infringers – before they have invested time, money and ego in the misuse of the mark – is more likely to lead to successful and less expensive outcomes.
Train licensees and employees in the proper use of marks and develop an international use manual. This has two benefits: 1) It assures that proper use will be made by your company, its employees and licensees to aid in proper protection; and 2) It turns each company employee and your licensees into additional detectives to look for potential infringements. A very cost-effective "watch" service.
Successful implementation of these TIPS can lead to a cost-effective and efficient international trademark protection program.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
