Costs, Likelihood of Success, and Timing for a Trademark?s International Branding

Expenses, 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 present. In the identical vein, it may be challenging for a non expert to determine which of the filing alternatives are greatest 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 procedure based upon some hypothetical trademarks for a hypothetical product.

Assume you want to brand a new animal food item in 1 goods classification. You have a set of countries in which you hope to do enterprise, and some tentative selections 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.

Initial note that AnimalFood, Bird2Eat and ChuppK range from merely descriptive of the product (“AnimalFood”) to arbitrary (“ChuppK”). Typically speaking, the opportunity of obtaining a registered trademark for an arbitrary mark is a lot higher than for a merely descriptive mark.

II.Alternative FILING MECHANISMS

As to the filing mechanisms, the possibilities 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 principal reasons. 1st, eleven of the eighteen countries are not members of the Madrid Protocol. Second, for the initial five years after filing an international registration (aka Madrid), the international registration is dependent on the simple application (filed, for example, in the U.S.). This means that, throughout the 1st five years of the life of the international registration, if the U.S. simple application or registration is refused, withdrawn, cancelled or restricted, in whole or in part, then the international application will be restricted or cancelled to the very same extent as the basic application. Of course, whether to use Madrid depends in part on the likelihood of problems with the simple 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 fundamental U.S. application. In our example, it is very likely that AnimalFood would not problem in the US, there is a opportunity that Bird2Eat, would not issue in the U.S., and there is a lesser opportunity that ChuppK would not problem in the U.S.

I would file a U.S. application, and then claim the Paris priority proper to that application in subsequent foreign filings for the same mark. Paris offers for a priority claim without having becoming 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 offer for six additional months to determine the other countries in which to file the mark, and for which mark or marks to file. An additional option would be further deferring filings in certain countries beyond six months from the U.S. filing date, thereby abandoning the Paris priority, until lastly deciding in which countries the new item is to be sold.

In most filing scenarios, I would file a CTM application instead of a national application for the a number of desired European countries. The benefit of the CTM is that it covers all EU countries for a cost not much more than that of prosecuting 3 or four national trademark applications. In this example, a CTM application would cover Italy, Spain, Greece, and Germany as properly as all other EU countries (at an approximate cost 00 for filing, prosecution, and issuance).

III.ESTIMATES OF SUCCESS, Costs

As to likelihood of success, costs, and timing, here are my estimates for each and every mark and each country, as of this year, 2007.

AnimalFood

In the U.S., I would estimate the likelihood of success as being much less than 20 percent (since the mark would be rejected as merely descriptive). The estimated U.S. price for prosecution is 00: 5 USPTO charges, firm docketing fees (add if mark not in use at time of filing) miscellaneous processing fees – mostly due to responding to office actions – roughly 00 due to anticipated office actions. This assumes no appeal and no third party challenge. The estimated prosecution time is 1-2 years, depending primarily on the promptness of responses to USPTO communications.

The opportunity of success in non English language countries would be greater for “AnimalFood” given that that concatenation of English words could not be as descriptive of the product in the foreign language this problem depends in component upon how prevalent English is in any specific country.

Foreign national trademark applications take about 1-three years to prosecute to issuance. Total expenses (which consists of costs for government fees, attorney fees, and our foreign agent’s fees) including issuance run 00-00 per country, again assuming no adverse decisions, appeals, or third party challenges.

Thus, the total expenses for prosecuting “AnimalFood” in the U.S. and the 17 listed foreign countries, over the next three years, would be about ,000, which consists of a lower price per application for the European marks due to the CTM filing and assumes no appeal or third party challenge. For budgeting purposes, assume half of those costs will be incurred in the very first few months of filing due to the docketing and filing expenses and fees.

Keep in mind that a registered U.S. trademark requires post-issuance action to maintain the mark’s rights. These include filings showing actual use in commerce and an optional filing of an affidavit of incontestibility five years soon after registration and filings showing use in commerce each and every 10 years thereafter. The costs for every such filing in today’s dollars is about . In addition, I would anticipate maintenance fees each 10 years to be roughly -00 in each foreign country.

Bird2Eat

In the U.S., I would estimate the likelihood of success as being roughly 50-75 percent (somewhat descriptive, but depending on circumstances surrounding mark, may be lower due to added significance of the number 2 – for example, if there are 2 key ingredients or benefits to the product). The estimated U.S. price for prosecution is 00: five USPTO charges, firm docketing fees (add if mark not in use at time of filing) miscellaneous processing fees – mostly due to responding to office actions – roughly 00 due to anticipated office actions. This assumes no appeal or third party challenge. The estimated prosecution time is 1-1.5 years, depending on promptness of responses to requests for instruction.

The chance of success in non English language countries would be about 75 percent considering that “Bird2Eat” would not be a merely descriptive term.

ChuppK

In the U.S., I would estimate the likelihood of success as being roughly 75-90 percent (arbitrary and a brief search found no confusingly similar marks). The estimated U.S. cost for prosecution is 00: five USPTO charges, firm docketing fees (add if mark not in use at time of filing) miscellaneous processing fees – mostly due to responding to office actions – roughly due to anticipated office actions. This assumes no appeal or third party challenge. The estimated prosecution time is 1-1.five years, depending on promptness of responses to requests for instruction.

The opportunity of success in non English language countries would also be roughly 75-90 percent given that “ChuppK” is arbitrary and also is unlikely to be contested.

In summary, trademark filing entails weighing many financial and legal alternatives and there are a number of filing strategies 1 can take. These strategies can alter based on an examiner’s adverse ruling or on a client’s spending budget shortfall or windfall. Every proposed international branding campaign need to be reviewed up front for opportunity of success, expenses, and timing to make sure that your client can make an informed business choice.