The Montana iP Trademark Blog

In part 2 we looked at the main factors to take into account when looking at protecting your new brand name as a trademark. We now look at the main issues your trademark attorney should be involved with to assist you on your journey to creating a new brand name ready for launch.

(i) An attorney should advise on the distinctiveness of each of the names on your short-list, particularly in terms of whether such words would be registrable in the countries where you plan to use the name.

In this context, a knowledge of trademark laws and procedures in a wide range of countries would be advantageous or at least some experience of dealing with trademark protection programmes in multiple territories. If your attorney has been involved from an early stage (see Part 1 of this article) you may already have been briefed on the distinctiveness issue and will have steered your naming process away from words that are descriptive of your goods or services.

An attorney’s advice also needs to take account of your marketing objectives - there may be circumstances where you may intentionally be seeking a name which is descriptive. Or you may be looking to coin a new term for your industry which you can take “ownership” of, rather than trying to establish a specific brand name as such. A good example of this would be IBM’s “e-business” name. Whatever your reasons for selecting a more descriptive name, the attorney should nevertheless brief you on the potential difficulties (and higher costs) of policing the use of such a name or being able to enforce your rights against others. It is also particularly important that all relevant stakeholders in your organisation are aware of these additional issues and potential risks, not least your legal department whose budget may end up being the one used during any ensuing litigation!

To keep costs down, initial searches should be limited to checking whether there are any existing identical marks. This will knock-out any obvious problematic names at any early stage. Consideration will also need to be given to the proposed, or likely future markets for the goods and services to be sold under the new name as it will be necessary to conduct searches in all countries involved. Initial identical searches may be limited to key markets but these will need to be extended at a later stage when considering your short list of names.

Once the initial identical search phase has been completed, a more detailed search and analysis of both identical and confusingly similar names will then be conducted on your short list of possible names. This risk analysis is a critical part of the attorney’s work. A good attorney needs to be able to take a realistic and commercial approach when advising clients on the extent to which a mark is available for use. Clients are usually not particularly interested in a purely legal analysis of risk and there will invariably be many situations where a similar mark is already in existence and the clients needs to know whether the mark poses a legal threat to the use of his own name. There are not usually any black and white solutions to such situations but a good attorney should be prepared to commit to an opinion on the issue and to be able to make similar comparative assessments of other marks in the list which face similar issues. The attorney should also provide details of the options available for overcoming any obstacles and, where relevant, advice on strategies for mitigating such risks.

A trademark attorney will be able to advise you on the most cost-effective filing programme for registering your selected brand name in the countries of interest. And based on the expected life-cycle of your product or service and your brand protection budget, the attorney should also advise on the level of trademark or other protection that is required, or whether or not a trademark registration is necessary at all.

Aside from individual national registrations, other forms of trademark registration are available. For example, the European Community Trademark offers a single registration which covers the entire European Union at substantially lower cost than individual national registrations. Similarly, under the International trademark system governed by the “Madrid Protocol”, trademark applications can be filed in participating countries based on a “home” application or registration, again at lower cost than individual national applications. There are additional benefits and some disadvantages to all these filing systems but your attorney should be able to advise you on which method, or combination of methods, is best suited to your individual circumstances.

Even before your final brand name has been selected, it may be prudent to file trademark applications for some, or all, of the names in your final shortlist, especially if the finalisation process is likely to be a protracted affair. This will help ensure that someone else does not file an application for one of the names in the interim - either coincidentally, or otherwise. Once you have filed such trademark applications in one country, it is then possible to file subsequent applications for one or more of the the same marks in an extensive list of other countries within a period of 6 months, whilst retaining the priority filing date of your initial application - as if they had all been filed on the same day. This not only buys you some time in reaching a decision on your final brand name but also means your filing costs can be spread out over a 6 month period.

For new product names, you should also discuss with your attorney whether the geographical scope of your trademark protection needs to be extended beyond the countries where the product may be sold. For example, in countries which have a reputation for counterfeiting of products in your particular industry, or in the countries where the product may be manufactured, but not sold. The latter is especially important not just as protection against an errant manufacturer registering the mark himself, but also to ensure continuity of manufacturing in that country - in many countries, the manufacture of a product under a trademark solely for export is considered as “use” of the trademark in that country and the ability to secure the rights of use in that country through trademark registration is therefore equally as important to those countries where the product is actually sold.

*********************************

If you would like more information about the issues raised in this article. Please call +44 1932 827334 or send an email to the author at info@montana-ip.com. A copy of all three parts of this article is also available to download in pdf format.