Costs, Likelihood of Success, and Timing for a Trademark’s International Branding
Bruce Margulies.
I. INTRODUCTION
A benefit of the international treaties and laws regulating trademark registrations is the flexibility they provide. In the same vein, it may be hard for a non expert to determine which of the filing alternatives are best suited for their business objectives in terms of timing, likelihood of obtaining trademark registrations, and cost. I provide below an example of the decisional parameters and process based upon some hypothetical trademarks for a hypothetical product.
Assume you want to brand a new animal food product in one goods classification. You have a set of countries in which you hope to do business, and some tentative choices for the trademark for the new product. The target countries, are: U.S., Mexico, Argentina, Chile, Brazil, Ecuador, Venezuela, Columbia Italy, Spain, Greece, Germany China, India, Taiwan, Thailand, Malaysia, and Singapore. The tentative trademark is one or more of the following: AnimalFood, Bird2Eat and ChuppK.
First note that AnimalFood, Bird2Eat and ChuppK range from merely descriptive of the product ("AnimalFood") to arbitrary ("ChuppK"). Generally speaking, the chance of obtaining a registered trademark for an arbitrary mark is much higher than for a merely descriptive mark.
II. ALTERNATIVE FILING MECHANISMS
As to the filing mechanisms, the options include direct national filings, Paris Convention priority, Madrid Protocol, and Community TradeMark (CTM) for European countries.
I would not file under the Madrid Protocol for two main reasons. First, eleven of the eighteen countries are not members of the Madrid Protocol. Second, for the first five years after filing an international registration (aka Madrid), the international registration is dependent on the basic application (filed, for example, in the U.S.). This means that, during the first five years of the life of the international registration, if the U.S. basic application or registration is refused, withdrawn, cancelled or restricted, in whole or in part, then the international application will be restricted or cancelled to the same extent as the basic application. Of course, whether to use Madrid depends in part on the likelihood of problems with the basic application. In addition, following publication of the basic application, there may be a third party challenge, adding uncertainty of obtaining foreign registration based upon the basic U.S. application. In our example, it is very likely that AnimalFood would not issue in the US, there is a chance that Bird2Eat, would not issue in the U.S., and there is a lesser chance that ChuppK would not issue in the U.S.
I would file a U.S. application, and then claim the Paris priority right to that application in subsequent foreign filings for the same mark. Paris provides for a priority claim without being dependent upon issuance of the U.S. application. It would also defer filing the foreign marks by six months from the date of the U.S. filing, which would provide for six additional months to decide the other countries in which to file the mark, and for which mark or marks to file. Another option would be further deferring filings in certain countries beyond six months from the U.S. filing date, thereby abandoning the Paris priority, until finally deciding in which countries the new product is to be sold.
In most filing scenarios, I would file a CTM application instead of a national application for the several desired European countries. The benefit of the CTM is that it covers all EU countries for a cost not more than that of prosecuting 3 or 4 national trademark applications. In this example, a CTM application would cover Italy, Spain, Greece, and Germany as well as all other EU countries (at an approximate cost $6000 for