When faced with a “litigation situation”, I often get the question, “Mrs-Trademark, what are my chances of winning?”.  And I have to say, “That depends almost entirely on how much “Proof of Use” you can give me for that country”. 
Proof of Use = Documentation.  How much and how good that documentation is will influence your chances of winning a litigation situation in most countries.

Entering into a litigation situation is a costly and time consuming process.  Not just for your lawyer and your checkbook, but in terms of your time as well.  The lawyer can only take the information you provide and process that into a legal argument.  It is your back up documentation that gives that argument real weight. 

Provable usage in great quantity is a key to international trademark strength and to the effective use of the Worldwide Famous argument to overcome certain types of rejections.

One of my lawyers recently told me:

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What Proof ?

  1. Sales & Advertising Data for Country X
  • Yearly reports (internal)
  • Actual invoices showing dates, amounts, brand name, customer/vendor name, goods/services
  • Purchase Order/Sales Agreements (showing the same details as above)
  • Service contracts
  • Fax, E-mail, Mail correspondence with customers/vendors

   2.  Third Party References, Worldwide
  • Win any awards? 
  • Mentioned in industry magazines/blogs/newsletters?        
  • Any product recalls?   Any Social Media references? (Twitter, Linked In, Facebook, UTube, etc.).
  • Used in TV or movies ?

   3.  Legal Agreements for Country X
  • Royalty reports, royalty agreements, distributor agreements, licensing agreements.
  • All such documents should bear the full name of the: owner, brand and the product/service covered therein.

In most countries, the more evidence you can provide to establish the date of first use of the product/service, the better.  The older the evidence you can provide, the better.  In many countries 5 years is a critical trademark use date, and documents proving the age of the trademark can be particularly useful.

So, if you are facing a trademark “litigation situation”, and you want to know what are your chances of success...think first about the quality and quantity of back-up documentation you yourself can provide.

The chances of successful litigation based on Worldwide Famous Trademark arguments, regardless of country, are improved when both the trademark owner and the trademark attorney work together in a creative manner providing voluminous proof to solid legal arguments.

 
 
When faced with any number of common litigation situations, trademark owners always ask me,”Mrs-Trademark, how much is this going to cost ?” 
And while this question is only one of many that trademark owners should ask when confronted with a litigation situation, I usually use this example to start off the discussions with the brand owner:

                If the brand is making $100k a year and growing, then it can possibly afford          $10k of litigation which secures the trademark for 10 years.  However, if the         brand is only making $10k and not expected to do much more, then $10k for     trademark protection seems financially prohibitive, even spread over 10 years. 

 

Most “litigation situations” worldwide are managed in 2-4 “steps”, over a period of 6-14 months, with a maximum expenditure of usd$15K. 

This is very general of course.  Some countries will be fairly painless (such as Mexico and El Salvador) or ridiculously over the top expensive (such as Singapore and UAE).

It doesn't really matter if you are the instigator of litigation or the recipient...some one files the first salvo, and then the other side fires back.

Each “step” in a “litigation situation” has a 2 part process which consists of one side filing something (action), then the other side filing something in response (reaction). 

Each side has a variety of defensive and/or offensive options in their bag.  Which one(s) you and they choose will depend on the specific circumstances of each trademark issue at every “step”.

How many “steps” and the total cost of trademark litigation will be determined by factors such as these:

  • The trademark examiner may refuse to accept our argument
  • The other side may keep fighting
  • The quality and quantity of support documentation provided may be weak
  • Legalization, translations, and mailings of documents may be needed
  • The fact that most litigation matters are charged on an hourly basis, so the longer the fight goes on, the higher the legal fees.

Litigation can be very expensive, but the process and its costs can be manageable. 

If you find yourself facing international trademark litigation, don’t be penny wise and pound foolish by making a decision based solely on price.  First determine the brand’s budget, the brand’s future, and its strength (ability to win), before carefully entering into any litigation situation.

 
 
“Merely Descriptive Rejection / Failure to Function as a Mark” “Confusingly Similar / Likelihood of Confusion”
“Opposition / Cancellation”

These are the three most common “litigation situations” on which the Worldwide Famous argument can effectively and successfully be used in many countries.  The situations have lots of different names but the concepts are nearly the same everywhere…and the way to win such rejections, as well.

Your brand’s ability to use the Worldwide Famous Trademark argument will depend on:

  • the consistency of the trademark itself (words and/or logo) between countries
  • the consistency of ownership (each trademark should be owned by the same entity/individual)
  • the consistency of the goods/services listing (many countries now have a pre-approved goods/services listing and it can be tricky to maintain consistency as the brand grows)
  • the dates of registration in each country…the older the better in terms of Worldwide Famous Trademark strength
  • the sheer number of countries in which your brand has achieved trademark registration
  • AND MOST IMPORTANTLY, the amount of documentation you are prepared and able to submit that supports the brands’ age and market claims in that specific country

I often get the question, “Mrs-Trademark, what are my chances of winning?”.  And I have to say, “That depends almost entirely on how much proof of usage you can give me for that country”. 

Entering into a litigation situation is a costly and time consuming process.  Not just for your lawyer and your checkbook, but in terms of your time as well.  The lawyer can only take the information you provide and process that into a legal argument.  It is your back up documentation that gives that argument real weight. 

In many countries, such as: Colombia, Singapore, Thailand, and Brazil, among others, the motto is “the more the better”.  I was told again just last week by a lawyer that: 

To prove acquired distinctiveness, information on use of the marks in COUNTRY X from its beginning up to now by virtue of sales and advertisement and evidence to prove sales and advertisement, for example, invoices, and shipping documents are required.  The COUNTRY X Trademark Office prefers voluminous amounts of proof.  One single invoice for a big sales carries less weight than 100 invoices for small sales.

The chances of successful litigation based on Worldwide Famous Trademark arguments, regardless of country, are enhanced when both the trademark owner and the trademark attorney work together in a creative manner to win, using as much ammunition as possible.