CREATING AND MANAGING A GLOBAL TRADEMARK

PORTFOLIO

Paul W. Reidl

Law Office of Paul W. Reidl

July 13, 2010

© 2010 Paul W. Reidl. All Rights Reserved.

reidl@sbcglobal.net Twitter @TMguy

A Comprehensive Approach

The course materials contain a detailed paper on “The Law.” It is intended to be a desk reference.

Today’s lecture: Practical tips on creating and managing a portfolio … How does “The Law” translate into day-to-day practice?

Today’s Roadmap

PART 1: Five basic principles for creating an effective portfolio: “Paul’s Principles”

PART 2: Applying Paul’s Principles to:

- Develop a Strategy

- Execute the Strategy

- Manage the Portfolio

Active Lawyering is Essential

Implicit in everything that Anne and Richard said, is this: you and you alone must navigate the client through the shoals and get them safely to where they want to go.

Active lawyering and partnership with the client is essential. You cannot be passive and simply execute instructions because your client might not even know the questions to ask. Sometimes you must chart the course for the client.

PART 1

PAUL’S FIVE PRINCIPLESor

Why do we sing “Take Me Out To The Ball Game” when we are

already there?

Paul’s Principles

Global thinking at the start

Trademark rights are Territorial

Registration is Usually Essential Protection may be Class-specific

Use it or lose it

First Principle: Think Globally at the Start

In today’s global economy you must start from the premise that the goods may be sold outside the United States.

It is easier to deal with global issues at the outset than to try to unscramble the eggs.

Second Principle: Trademark Rights are Territorial

Each country stands on its own

This means you have to decide where you want to protect your mark at the outset. Looking only at the US may be myopic.

Three exceptions: - Regional registration systems (CTM, ARIPO, OAPI, Andean Pact)

- Domain names under the UDRP - Famous trademarks (Paris Convention 6bis)

Third Principle: Registration is Essential

“Without me you have nothing at all”“First to File Rule” (98+% of the world)

– Rights flow only from the registration– Prior use is irrelevant– No registration, no standing to sue for

infringement, counterfeiting, unfair competition“First to Use Rule” (common law)

– Limited geographic rights in the face of concurrent use or subsequent third party registration.

US Registrations Are Not Essential, But They Are Preferred.National rightEasier access to Federal courtsStatutory notice IncontestabilityAll for a relatively low filing fee of $275You can do it all on-line with a credit card

in a few minutes.

Fourth Principle: Trademark Rights may be Class Specific

The international classification system defines the scope of your rights in most countries (but not the United States.)

The scope of protection afforded by your registration will depend on the rules of each country (US – broadest; Canada – narrower; Mexico – very narrow.)

Bottom Line: Define the goods of interest

Fifth Principle: Use it or Lose It

Some jurisdictions require use to register or renew (e.g. USA, Canada)

Most jurisdictions require use of the mark within a defined period (3-5 years)

Marks can be cancelled on petition or non-use can be asserted as a defense to an infringement action.

Recap: The Five Principles

1. Think Globally at the outset

2. Territoriality

3. Registration is essential

4. Protection may be Class-specific

5. Use it or lose it

PART 2:

APPLYING THE FIVE PRINCIPLES

or

How do You Practice What I Preach?

Part 2: Applying the Five Principles to:Develop the Global Strategy

Execute the Global Strategy

Manage the Portfolio

Part 2A

DEVELOPING A GLOBAL STRATEGY

or

What is Your Game Plan?

2A. Developing a Global Strategy: 4 Considerations Protectability: Is the “mark” protectable?

Scope: What is the appropriate perimeter of protection? Geographic and goods.

Importance: How important is the mark to the client?

Budget: What is the client’s budget?

1. Protectability: “You Can’t Make a Silk Purse out of a Sow’s Ear.” Richard and Anne addressed this at length. Select a protectable mark, or advise the client of

the risks. Avoid:

- Generic or descriptive terms (“Premium Choice Rosé”)- Geographic terms – GI’s (Napa Valley)- Surnames- Foreign language problems (Generics and translations)

Gaffes of formerly-employed marketing executives. Sierra Mist (Germany) Pavian (Germany) Ford Pinto (Brazil) Coors’ “Turn it Loose” (Mexico) “Finger Licking Good” Coca Cola (China) Pepsi Comes Alive (China)

2. Scope: The “Perimeter of Protection” Define the geographic area of present and future use:

– Where manufactured? Internet use?

Define the “buffer zone”:

- Where is the competition? Counterfeiting?

Define the scope of the goods on which the mark will be used: Primary goods, marketing specialties, others?

3. Importance to the Client

Does your client need the insurance afforded by a trademark registration and, if so, where?

- But for overseas it is not merely insurance, it is essential.

Considerations: projected sales; life cycle of the brand; advertising investment; primary or secondary mark.

4. What is the Budget?

$1,300 - $1,500 per non-US country

“Register it all over the world -- Right now!”

– This could be a $100,000 proposition

– Don’t count on 100% clearance even if the trademark is a fanciful term

Registration Strategy Recap

1. Select a protectable mark

2. Define the perimeter of protection

3. Determine the importance to the client

4. Define the budget

Bottom line: These are the components of your strategic brand plan

Example

Mark: BONSOIR! (cognac) (France)Goods: Class 33 (cognac, brandy); Class

25 (shirts, caps, jackets)Countries: Europe (Germany, UK, France)

(CTM), North America (US, Canada, Mexico), Asia (Japan, S. Korea, Taiwan)

Budget: $20,000

Part 2BEXECUTING THE

TRADEMARK STRATEGY

or

Is it true that sharks do not eat lawyers out of professional

courtesy?

2.B: Executing the Strategy: 7 Considerations

Networking Clearing the mark Solving problems Global registration schemes Tips on Portfolio Management The Danger of Complacency Ethics

2.B.1 Networking is Essential

Use a trademark specialist!

Get to know them; make personal contact.

Get your staff involved.

INTA and other Associations (www.inta.org)

2.B.2. Clearing the Mark (Due Diligence) Richard covered this at length.

Risk management tool; know the terrain; avoid the landmines

Use a two-step process? Screen or preliminary search?

Don’t forget to look for use; web searching

Think about the attorney-client privilege. In a dispute your client may want to assert an “advice of counsel defense,” and that would make your opinion discoverable. Where do you stop your search? How much do you say in writing? What do you put in writing and what do you communicate orally?

2.B.3 Problem Solving -- Options

License (US quality control obligation)ConsentAcquisition Cancel for non-useAnd for some, you will just have to get a

new name. (Hint: clients generally do not like this option.)

2.B.4. Global and Regional Registration Schemes

Community Trademark (CTM)(EU)

Madrid Protocol

2.B.4.a Community Trademark (CTM)

One registration covers the entire EU. Extends to the new EU members. Use in one country supports the registration. Can be defeated by a prior national registration. Enforceable in all courts. Much cheaper than 25 national registrations

($2500 vs. $30,000) But you still must clear the mark in each

country!

2.B.4.b Madrid Protocol

One-stop filing for US companies; extension to US for foreign companies.

One registration; one priority and renewal date 79 member countries Failure of the national application is not fatal;

three month window after “central attack.” But you still must clear the mark in each

country!

2.B.5. Tips on Managing the Portfolio

Give simple instructions to outside counsel: “Please search the mark BONSOIR! for a cognac/brandy and jackets/caps/shirts and provide a written report as soon as possible.”

In-house trademark administration with an off-the-shelf database?

Network to select the right team. Document retention program; electronic or hard

copy? Training, training, training, training, training!

2.B.6. The Danger of Complacency

The game does not end with the registration; what good is a registration of the rights are not enforced?

Look both forward and backward.

2.B.6.1 Looking Forward: Constant Vigilance

Diligence is essential; you “wait and watch” at your peril. Don’t just put the certificate in the file and forget about it.

Tools: periodic searches, field sales force (training), watch services, Google, trade publications, store surveys, etc.

Watch for genericness issues.

2.B.6.2 Looking Backward

Periodic Audits/Benchmarking should be considered:– Identify dead wood– Identify areas of changed importance– Identify mistakes and areas of risk– Identify areas of non-use – Deal with changed circumstances

Can reduce costs, increase efficiency, and decrease risk.

2.B.7. Ethics: it is all up to you.

You cannot take a “hear no evil, see no evil approach.” If it smells bad, it probably is bad.

You must hold your ground with your client or bad things can happen.