Intellectual Property How to Establish and Protect Your International Trademark and Brand
A conversation with Susan Brushaber, Esq., Partner at Schuchat, Herzog and Brenman in Denver. Finally you'll understand this!
Facilitated by: Julie Williamson Developed by: International Business Circle
Susan Brushaber is an Intellectual Property Law Specialist, both international and domestic, with particular expertise in licensing, trademark prosecution and enforcement (including brand management and strategy), copyright law, trade secret law and protection, portfolio management, and anti-counterfeiting. She also advises clients on corporate and commercial matters, including the formation and management of foreign subsidiaries and strategic relationships.
She is a vice chair of the International Intellectual Property Committee of the International Section of the American Bar Association and is a contributor to the International Law Quarterly and the trademark editor for the International Year In Review.Ms. Brushaber frequently speaks on anti-counterfeiting measures and was recently appointed to the North American subcommittee of the Anti-Counterfeiting and Enforcement Committee of the International Trademark Association.
Excerpt and Highlights
When you have a brilliant idea . . . how do you protect it?
Suppose I have this brilliant idea for a new product, let’s say “sneakers with springs” so people can jump around. I’m a U.S.-based person; I think I want this to be an international phenomena. Where do I start to establish and protect a brand? Obviously you’re taking it from the marketing perspective and you would, of course, work with your marketing team to come up with a brand, and that brand would be personified through a name.
That name may have graphics or a logo attached to it, so you’d want to do your consumer testing to make sure that’s favorable, and you may have jurisdictions outside the U.S. already in mind, so you’d want to test it there to make sure that the message you’ll be sending is appropriate and won’t have any negative connotations attached to it. Once you’ve gone through the marketing process, your next step is to think about whether or not you can claim exclusive rights to that mark in other jurisdictions. So you may want to go to a lawyer, such as myself, and discuss the mark with them and determine whether you are going to use it only on sneakers, or are there other products also?
And then what I would recommend is you do some trademark searches, and you do that through professional search firms that not only monitor the mark on registries — international registries of marks — but more importantly they go through databases of what we call common law marks. Those are marks that are in use, but not yet registered. What you’re looking for is marks that are confusingly similar to that mark, because if those come up, then there is the potential that your mark would be infringing on those marks and you can’t use it. So, before you invest a lot of money in the development of the mark itself, through developing packaging, maybe spending money on graphics and logos, maybe even producing products with the mark embedded on them, you want to make sure that you can actually use that mark. What's the difference between my trademark and my brand? They’re somewhat interchangeable — but if you think about it this way, your brand is very conceptual, right? It carries with it kind of a feeling of what the product embodied. It brings about an emotional reaction from consumers.
It’s a marketing tool. Your trademark is the embodiment of that brand into, let’s say, a concrete structure or concrete form, or legal form that you can claim exclusive rights to.
If I can't claim exclusive rights to the EMOTION my brand evokes, can I protect the PHYSICAL form of my brand? Yes. That is where you’ll gain your protection, and you can exert your rights over that form. REGISTRATION: SEARCHES, USAGE, & TIMING Is registering a trademark in the United States sufficient to take the company global? No, since you are based in the United States, you want to first file for registration in the United States. You can file an “intent to use” application, if you haven’t yet brought it to market but you suspect that there may be someone out there who may come up with a similar brand. Yeah, because this is a hot idea, so… It’s a hot idea, and you know, we all think that we’re wildly imaginative and creative, but sometimes the truth is, we’re not, and there tends to be a lot of overlap between brands, between trademarks. That’s why again, the importance of doing the search first. So given that you’re a U.S. company, the logical starting point would be of course to register it in the United States. Now, if you’re already using the brand — if you’ve launched your product — then you can file an application and along with that application your would file a specimen of the goods. That would be perhaps product packaging or a .jpg file of a photograph of the sneaker with the mark on it. You would have to also include the date of your first use in commerce. It’s very important as you’re filing to keep track of the dates. Perhaps you first announced your product at a trade show. That’s your date of first use. Perhaps then two weeks later you ship the goods from Colorado to Washington. That’s your date of first use in interstate commerce. So there’s two very different dates. The United States Patent and Trademark Office is very picky, and you don’t want to suddenly get caught where you say that you shipped something in June, whereas you actually shipped it in November. That can get you into some problems with the trademark office and potentially invalidate your mark. So, I get it successfully registered in the United States . . . Right, but the registration process itself takes some time. It takes about a year. In the United States, as opposed to Europe or other jurisdictions, such as some Latin American jurisdictions, it’s a slower process. It’s a more stringent process here. In other jurisdictions — excluding India and China where it still takes years to get a trademark registered — it may be only a matter of months. While your application is pending in the United States, what you may want to consider, especially if you do have very aggressive plans to expand internationally, is file an international application under the Madrid Protocol. This allows you to use your United States application as the basis for other applications in other jurisdictions around the world. Good tip. So it accelerates the process?
It accelerates the process. It takes away a lot of the administrative aspects of filing a mark in multiple jurisdictions, instead of working with multiple foreign agents, because each country has its own patent and trademark office. In this case, you’re working through the World Intellectual Property Organization, so on the basis of one application you’re essentially able to get multiple registrations.
Wow, you can see right away the efficiency of that. Right. In general, you should plan anywhere from months to years — in the U.S. somewhere maybe around a year — to get through the process.
Right, to get through the process itself, but that doesn’t mean that you can’t use the mark. You can use a mark without registration. What a registration does is give you additional protection and additional rights against infringers. The primary benefit of registering your trademark with the United States Patent and Trademark Office is, one, that it is prima facie evidence of ownership, and two, that it expedites the process of filing your registrations internationally.
Are there reasons why you would NOT want to register your trademark? No, as long as you’ve done all your research upfront, then it’s probably more expensive to you in the long run not to file your trademark registration, if you want to claim exclusivity and prevent others from using your trademark. TRADEMARK RISKS What are some of the biggest risks people have when they don’t register?
If you don’t register your trademark, you can’t prove ownership. And, in the event that there is an infringement, if you have registered your trademark, then you’re entitled to statutory damages. And there are greater protections, there are greater criminal protections. By having a federal trademark registration, you can record that trademark with Customs, which then puts them on the alert to prevent infringing goods from entering the country. So you can stop things at the border? You can have them stopped at the border without the lengthy inspection process and all the other administrative nightmares that you would otherwise have to go through with your trademark not registered with Customs. It’s also possible in other international jurisdictions, if you’ve registered your trademark, to record your trademark with their customs offices as well. This applies to the European Union.
This also applies, I think, in Thailand. Argentina and Colombia are beginning to implement similar legislation as well. And one thing you should always remember is, if you are manufacturing your goods overseas and you haven’t really done a great job perhaps of investigating your partners overseas, there’s a good chance that they may begin to manufacture your goods as well, with your trademark but without your knowledge. That is a form of trademark infringement, as well. If you’re properly registered, can it lead to a criminal offense? Yes, if you have a registered trademark, you can enforce your trademark against the overseas infringers. You would work first of all with the customs offices overseas. I’ve heard a lot about counterfeiting. Is that what we’re talking about here? That’s exactly what we’re talking about. Everybody tells me I should be worried about it. Right, especially if you manufacture your products overseas. Often what happens is your partner may produce your goods during the day, for your benefit, and your goods in their second shift for their own benefit. It’s very easy for them to do. For example, with your sneakers, it’s very easy to produce knockoffs, so you may want to consider looking into trade dress protection as well as trademark protection. What’s that? Trade dress protects the design of the goods. Not to the extent that a design patent would, but if there’s some ornamental aspects to the product itself, then that’s the trade dress part of it.
CLAIMING YOUR RIGHTS
How can I capitalize on the value of the trademark?
You can’t capitalize on the value of the trademark until you’re using it. So "start using it" is step number one? Yes. And this is a very important point: in the United States, your actual trademark rights — your rights to your mark — don’t arise upon filing your trademark application. They arise upon use. So if we were to go ahead and file that intent to use application, until you can actually demonstrate that your goods have been used in commerce — have been distributed in commerce under the mark — your trademark won’t issue. Do I have to sell the product, or just market the product? You have to actually ship it for sale to a store or a distributor. There have been times where people wanted to get an early priority date on their registration, so they’ve played little games like just shipping some t-shirts with their mark on it across state lines. That does not constitute interstate commerce. You have to actually offer the goods for sale — it has to be a legitimate offer — before you can claim actual use in commerce. So it needs to be in a store, or somehow publicly available. I can’t just say, “Oh, well, my brother Sam in Tennessee is going to sell one of these to his neighbor.” Right? Right. It has to be actually available for sale in a public venue. And the most important thing to remember, from an international perspective, is that in most other jurisdictions around the world, your trademark rights arise upon registration, and you don’t need to prove actual use in commerce for your mark to register. But in the U.S.— But in the U.S., you do. So that’s where the danger arises. Overseas, someone may go ahead and register your mark in, let’s say Brazil. Then you may suddenly go to Brazil, try to start marketing those sneakers under your mark, and suddenly someone’s approaching you with a potential infringement cause of action, or an offer to sell you that mark. Your own mark? Yes, your own mark — for a huge sum of money. Wow. Another great reason to start the processes in tandem. Right. Another great reason to start that process in tandem, and another great reason to institute a trademark enforcement program. And this can be done on many levels. First of all, your employees. You want to train your employees, teach them about your trademarks and the appropriate use of your trademarks, and have them do a lot of the watching for you. You know, maybe they’re home one day, watching television at two o’clock in the morning, and suddenly there’s an infomercial about springy sneakers. And they’re not ours? And they’re not yours. Or it’s something being sold under your mark. So they should bring that to whoever — perhaps if you have an in-house legal person, that should go to the legal department. Maybe it should go to the head of your marketing department, who would then get in touch with your outside counsel, and then outside counsel would take action in the form of, as a first step, a cease and desist letter.
A second layer of enforcement is to work with your distributors, and maybe you have outside sales reps. Whoever you’re using, you may have people based around the world who act as your agents. Often what I like to do is include in my distribution agreements with my clients a provision that obligates distributors to monitor the trademark for infringement and to notify you if there’s any infringement. So you want to put your distributors on alert. And it also works to their benefit too, because you know then they’re selling more products or they’re lessening the risk of products that are not yours being sold under your trademark. Third, I would recommend that you use a watch service. It’s not a huge expense. You engage a watch service, which is usually the same company that does your trademark searches, to monitor all over the world. It’s called an international watch for potential infringing uses of your trademark. You may see your trademark used all over the world in a lot of ways. Sometimes it’s not actually an infringing use, other times it may be. So this is another reason to enforce and ensure that the strength of your mark is maintained, because your trademark is the embodiment of your brand. As we say, our reputation precedes us, and your reputation is embodied in your brand and all the marketing monies you’ve spent and all the trade shows you’ve gone to, and all the sponsorships and everything, to create a mark that communicates high quality and value. Well, if that mark starts to be used on goods that are inferior, that’s going to dilute all the effort and all the expense that you’ve gone to create a strong brand. TOP 4 THINGS:
1) Get your employees engaged; make sure that they’re your feet on the street, watching for infringements.
2) Get your distributors engaged. Consider building it into their contract. Think in terms of how they can be a watchdog for you. 3) Use professional services in the form of a watch group. There are people who do this, who specialize in it. Go to the expense of engaging them because in the long run, in the greater scheme of things, those are dollars well spent in terms of protecting your brand integrity. 4) Be prepared to enforce your brand, be it through cease and desist letters, or through litigation if the cease and desist letter doesn’t work, because if you don’t enforce your trademark against third party users, you’ll dilute its value and ultimately you could lose it. So you could lose the legal protections if you allow other people to continue without a cease and desist order? Right.
EXTENDING YOUR BRAND What if you want to grow a brand, expand your brand presence or rebrand a product?
The same process would apply. Perhaps you have a brand — your sneakers, right? — and that’s in the class in footwear. Suddenly, you say, “This is such a great name, I’d love to see it on clothing, too. I bet if I have it on sweatshirts I could sell more sneakers.” Or if it’s on basketballs, I could sell more sneakers. The classic Nike model. Right, the classic Nike model. Harley Davidson and others have done it, too. Well, with that one trademark registration, will you be able to use that mark on all those other goods? No. You need to register the mark in those other classes, because when you register your trademark, you register it in connection with a particular class of goods or a particular class of services, and you can only claim exclusivity within that class. That’s why, for example, you see things like Cadillac dog food and Cadillac cars, and they’re two totally independent companies. But they’re in different classes. They’re in different classes. So when Starbucks decided to start selling furniture, they had to register Starbucks in the furniture class? Exactly, or Starbucks ice cream. They had to register it in the ice cream, as opposed to the beverage class. Key Points
1) Do your research first.
2) Register your mark, if you plan to license your mark to other parties or if you plan to have outside manufacturers manufacture your products under your mark.
3) Know your partners well.
4) Focus on enforcement and proper training in the appropriate use of your mark.