IP Forum Wrap-up #2: Six Trademark Tips from In-house Experts

How is your company handling foreign trademark searches? Is the Madrid Protocol still useful? Is your company building house brands or a branded house? These are some of the latest issues in trademark law discussed by in-house IP counsel at our IP Forum last week (co-hosted with our friends at Dennemeyer). Here are a few tips they had for companies doing business globally.

Foreign Searches > Thanks to technology advancements, many companies are finding it no longer necessary to run complete searches When doing a foreign search, they are looking only at the countries where they are currently selling  products, as well as any country they hope to be in sometime in the near future.

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Where to File > Many companies get hung up on trying to file trademarks everywhere. However, it has now become common practice to stage or tier filings—filing only in the most important countries first and expanding coverage at a later time when budgets allow or increased market share requires.

Madrid > While Madrid filing is cost effective and efficient, our panelists warn to use it with caution. In some countries, it can speed up your process, but in others – China for example – it fails to accomplish much.

Tax Considerations > Tax considerations are not related to where a trademark is filed, but rather which company actually owns the mark. Often, larger companies will file the mark under a foreign subsidiary opposed to the umbrella company in order to avoid paying costly royalties in other countries.

Brand Strategy and Architecture > This is something that everyone in your company needs to understand. Especially when working with subsidiary companies, employers need to ensure that all employees recognize the overall brand strategy. Our panelists seemed to be moving toward investing in the main company brand and only those sub-brands with significant equity—getting rid of lower value marks.

Trademark Oppositions > The budget can play a big factor when a company is deciding to go after a trademark infringer or not. Our panelists provided to key pieces of advice on this topic. Be smart and consistent in what you pursue. Determine what type of infringement is more important to go after, and what you are willing to simply let go. Make sure that pursuing an infringement won’t cause your trademark to be subjected to cancelation for nonuse or other issues.

We’ll be sharing more wisdom from our IP Forum – Minneapolis panelists over the week.



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