<![CDATA[E-Trademark Universe - Blog]]>Wed, 13 Dec 2017 20:23:04 -0800Weebly<![CDATA[ THE INTERNET OF TRADEMARKS. SO MANY CHANGES….HOW CAN WE TRADEMARK MANAGERS KEEP UP? ]]>Mon, 20 Mar 2017 12:11:34 GMThttp://e-trademarkuniverse.com/2/post/2017/03/-the-internet-of-trademarks-so-many-changeshow-can-we-trademark-managers-keep-up.html What a challenging time to be an international trademark manager.  The trademark world is changing, quite literally, from day to day.  The retroactive price increases have been particularly fun to deal with!
The existence of a reliable, worldwide trademark management (and filing) system is progressing towards reality.  It’s been an exciting several years with several more just like it to come. 

In the first quarter of 2017 alone, I have already received notification on the following sweeping & immediate changes effecting international trademark filings in the following countries:

Venezuela        A price increase of 69.5% to most patent and trademark filings

Egypt               A retroactive price increase on patent filings of over 100%

India                A new law and price increases of 25%-125%

Saudi Arabia   Yet another price increase on various trademark filings, most notably publication

Qatar               Changes to filing practices in classes 42-45 and adopts the Nice Class Codes

Japan               The trademark search database was “hacked” and therefore unavailable for days

USA                New guidelines on sample requirements, including increased fees on most trademark                                services

Singapore        Fee increases on April 1 2017 to trademark services

TMView          Not yet reliable enough to be used for trademark search or management without using                              additional sources

Australia          Has a new look on-line

Canada            Has a new trademark trademark title certificate in honor of 150 years, and has adopted                              the Nice Class Codes

Bahrain            Has launched a new electronic filing system

Cambodia        Joined the TMView (right before the new year)

Windows 10    Causing all sorts of mind boggling problems (including massive data usage) behind the                            scenes

LinkedIn          Has a brand new format
TIPS for Weathering The Bumpy Trademark Seas

1.      Make sure you use multiple trademark search sources (databases)
  • for example, when searching EU, search also the national databases, WIPO, and TMView

2.      Keep abreast of current trends (LinkedIn is a good place)
  • sign up for Groups that interest you and get a weekly news letter summary via e-mail

3.      Use experienced international trademark professionals in every country
  • yes, there are free search databases on-line that are excellent for direct hit searches, but these generally do not provide the variation actually needed to determine if a trademark is register-able (or not)...and, do you have the experience to check those variations ?

4.      Verify rates every 60 days
  • new laws, new electronic systems, new procedures, new documents required..things are changing rapidly...don’t trust what you think you know if your information is more than 60 days            old

5.      Think globally, not nationally
  • because the world is growing smaller every year, in terms of commerce...it is no longer enough to do a country only trademark search with a single database source...search engines and social media for common law...TMView, WIPO, and national databases for trademark rights.

6.      Invest in a solid trademark management tool (a database to keep track of dates, country details and other information)



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<![CDATA[ THE INTERNET OF TRADEMARKS.  THE TMVIEW – EVERY TRADEMARK MANAGER’S FANTASY. ]]>Wed, 01 Mar 2017 16:46:48 GMThttp://e-trademarkuniverse.com/2/post/2017/03/-the-internet-of-trademarks-the-tmview-every-trademark-managers-fantasy.htmlThe LINK every trademark manager should have in their favourites for 2017 is TMView.
https://www.tmdn.org/tmview/welcome.html

The trademark industry is in massive upheaval at present, with many years of the same still in front of us.  Since 2012 we have seen laws being changed constantly, then implemented, usually with very little advance warning, resulting in the following:

  • Price hikes all over the world (Mexico, Thailand, USA, EU)...some of them being applied retroactively (Kuwait, Bahrain)...sometimes several increases in the same year in the same country (Saudi Arabia) and the ones we can expect soon (Canada, Bangladesh, Saudi, Singapore).
  • Electronic systems are being put into place, resulting in the inevitable learning curve, new class codes, unreliable search engines, and other process glitches (Saudi Arabia, Qatar, China, Canada).
  • Additional documentation requirements are being put into place (China, Saudi Arabia, West Bank, USA)


TMView is the increasingly exciting “worldwide trademark database”.   TMView has been around now for several years, but until January 2017 was only minimally useful and only occasionally available.

Finally fulfilling its promised potential, in the last 2 months the TMView has turned into a valuable tool.  The closest thing we have to a “worldwide trademark database”, the TMView has become increasingly reliable, providing more & better international trademark data with an increasing number of search options.  I have recently included the TMView worldwide trademark search engine as one of my regular search sources for any country.

It is the joint creation of the 5 largest trademark offices in the world (TM5), consisting of: USA, Japan, South Korea, EUIPO, and China.  There was rapid membership growth in 2016 resulting in a current total of over 50 countries as we enter 2017:

  • Malaysia and Cambodia joined in December 2016
  • Georgia & Albania joined in July 2016
  • Brazil joined in February 2016
  • Hungary continues to try to join into 2017

Even WIPO applications were added in September 19, 2016, although I was still fighting to properly access those records just before Christmas...and again last week.

The TMView is still very much a work in progress, but it is evident that eventually this single global search tool can and will be used by global trademark managers to increase their own knowledge and control of their worldwide trademark portfolios without increasing costs.

The world continues to become much smaller commercially, as brands move globally through the Internet, with your without their owners’ permission.  The TMView is a great (free) tool to use in taking that first step towards expanding your brand internationally.  There is no substitute, however, for an experienced international trademark searcher, especially in these turbulent, evolving times.

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<![CDATA[NOT EVERYTHING CAN BE TRADEMARKED.  POLITICAL SLOGANS?  MAYBE...NOT.]]>Sun, 12 Feb 2017 16:21:51 GMThttp://e-trademarkuniverse.com/2/post/2017/02/not-everything-can-be-trademarked-political-slogans-maybenot.htmlThere are presently nearly 600 trademarks filed in USA that include the word “Trump” (which, of course, is not only a surname).  Approximately 175 of those were filed since 2015, two-thirds of which are now dead.

This is a staggering number when compared to 140 total for “Clinton” (either/both), 34 of which are still alive, or total 36 for “Hilary” of which 16 are still alive.  “Obama” only comes in with a total of 188, 7 of which are still alive, and even George Bush had 11 total.

Is your slogan really a product brand name?

If a trademark filing does not relate to commerce (to a brand), then it should be rejected due to:

  • “failure to function as a trademark” and “merely ornamental”
  •  does not contain the “consent of the individual” (whose name is included in the trademark)


FAILURE TO FUNCTION AS A MARK / MERELY ORNAMENTAL

One of the most common mistakes in trademark filing is to think that something you print on an item requires (or entitles you to) trademark registration.

A trademark is the unique word(s) / slogan / design that represents your business products or services.  Printing that trademark (brand name) onto an item (t-shirt, hat, coffee mug, pen, calendar, tote bag, key chain, magnet, banner, note pad, etc.) does not make it trade-markable.  It makes it advertising.

If I were to attempt to trademark my company name “E-Trademark Universe” for a t-shirt printed with that name on the front of it, my application would be refused by the USPTO. 

It is not only not required for me to trademark my name for a t-shirt, it is unlawful.  I did not make the t-shirt, and I am, therefore, not entitled to the brand name for that product.

Printing my name on a t-shirt is merely advertising for trademark services (not clothing), and because the printing on the front is merely “decorative” ...it “fails to function as a trademark”.


CONSENT OF THE INDIVIDUAL

You can’t use a person’s name without their permission.  The USPTO will require a letter from the owner stating this:

“I, PERSON’S NAME, consent to the use and registration of my name as a trademark and/or service mark with the USPTO.”

Any application including any name not your own... TRUMP / CHER / STING / MADONNA / MRS-TRADEMARK when used in a trademark application will require the consent of the named individual.


HOW CAN I PROTECT MY POLITICAL SLOGANS?

If you are printing your slogan on items produced by others, then you have no right to (nor need of) a trademark.  A trademark is the unique brand name you use to identify your products/services.  A political slogan is not generally used to identify and sell your products or services to others.

You do, of course, have a right to express your views in public, and share that view with others.

If you have a design element to your political slogan, then copyright is a possible option.  You can protect a “work of art” by copyright, such as a unique drawing (that can be with your words).

A domain name registration is still a very affordable option, and you are free to register any slogan as long as it does not commercially harm an existing trademark owner (who might sue you to drop the domain name).

However, you don’t need a trademark nor a copyright nor a domain name to freely print your opinion on any item (t-shirt, hat, coffee mug, pen, calendar, tote bag, key chain, magnet, banner, note pad, etc.).

NOTE—this information is general for all trademarks worldwide...based on USPTO Reference 86973550.


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<![CDATA[HOW CAN I IMPROVE MY CHANCES OF WINNING TRADEMARK LITIGATION THROUGH DOCUMENTATION?]]>Mon, 10 Oct 2016 16:47:51 GMThttp://e-trademarkuniverse.com/2/post/2016/10/-how-can-i-improve-my-chances-of-winning-trademark-litigation-through-documentation.html 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:

`

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.

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<![CDATA[LITIGATION IS EXPENSIVE...HOW DO I DECIDE IF MY BRAND CAN AFFORD TRADEMARK LITIGATION?]]>Mon, 19 Sep 2016 18:25:22 GMThttp://e-trademarkuniverse.com/2/post/2016/09/-litigation-is-expensivehow-do-i-decide-if-my-brand-can-afford-trademark-litigation.html 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.

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<![CDATA[ THE EVOLUTION OF LANGUAGE.  “SCANDALOUS” TRADEMARK REJECTIONS AS A HISTORY ON WHICH WORDS WE FIND MOST OFFENSIVE...OVER TIME. ]]>Wed, 31 Aug 2016 21:59:46 GMThttp://e-trademarkuniverse.com/2/post/2016/08/-the-evolution-of-language-scandalous-trademark-rejections-as-a-history-on-which-words-we-find-most-offensiveover-time.html Not everything is trademark-able, including “Bad Words,” which may be considered “scandalous and immoral matter”.  But which words are the bad ones ?
For fun, I started playing around with TESS (the USA search engine) and discovered some interesting facts on which “bad words” were accepted as trademarks in USA, and which ones were rejected….when.

In most countries one can’t register “bad words” due to them being offensive.  The definition, however, of which words are “bad” varies by country.  Here is a snapshot from the USPTO on how that definition has changed over the years. 

From an office action dated June 2016, the USPTO considers the following:

For a mark to be “scandalous,” the evidence must show that the mark would be considered shocking to the sense of decency or propriety, giving offense to the conscience or moral feelings, or calling out for condemnation.

Sorry to offend, but let’s review the history of these “bad words” (in alphabetical order):

ASS
  • 1st registered trademark granted in May 1972.
  • 1370 total trademarks applied for using the term.
  • 471 are still alive today, over 345 of which have achieved registration.

ASSHOLE

  • 1st trademark application filed in August 1985, abandoned in 1987.
  • 24 total trademark applications using the term, 23 of which have been rejected (the most recent August 2016).
  • Last trademark application filed June 2016, awaiting first review.

BITCH
  • 1st registered trademark granted in July 1973.
  • 972 total trademark applications using the term.
  • 350+ are still alive today, over 220 of which have achieved registration.

BASTARD
  • The 1st filing was made in 1987 and immediately rejected.  The 1st trademark registration was granted in July 1995.
  • 253 total trademark applications using the term.
  • 117 are still alive today, 83 of which have achieved registration.


BOOB
  • 1st registered trademark granted in 1978 covering tube tops in 025
  • 179 total trademark applications using the term.
  •  69 are still alive today, over 55 of which have achieved registration.


CUNT
  • 2 ladies tried to register this word in 2007.  Both were immediately rejected.


DAMN
  • 1st registered trademark granted in 1978
  • 378 total trademark applications using the term.
  • 158 are still alive today, over 105 of which have achieved registration.


FART

  • 1st registered trademark granted in 1982 for PHARTZ, but not until 1990 for the actual term.
  • 148 total trademark applications using the term.
  • 39 are still alive today, 29 of which have achieved registration.

F#*K
  • 171 total records, the first application was filed in 1996 and the latest in July 2016.
  • 29 records still alive, mainly pending, all rejected for scandalous.
  • 2 are registered -- “WTF” versions, which is knows to stand for “what the f&#k”.

G-D
  • 7698 applications filed that take the Lord’s name in vain (very offensive to many). 
  • 3804 of these achieved registration and 3450 of them are still currently alive.
  • Only 1 application includes the term “damn” and it was repeatedly rejected in 2012.

HELL
  • The first trademark using the term registered in 1997 after 3 years.
  • 10 total trademark applications using the term.
  • 5 are still alive today, 4 of which have achieved registration.


INFIERNO (Spanish for Hell)
  • 6 total trademark applications using the term.
  • 3 are still alive today, 2 of which have achieved registration.


MIERDA (Spanish for Shit)
  • Only 1 pending trademark filed in 2016, awaiting first review.


PENIS
  • The first trademark almost using the term registered in 1979 after 1 year (using “peni” for lab tests). It would not be until 2004 until an actual registration including the term “penis” is registered in class 03.
  • 58 total trademark applications using the term.
  • 14 are still alive today, 8 of which have achieved registration.


SHIT
  • 183 total trademark applications using the term.
  • 43 are still alive today, only 5 of which have achieved registration...none using the actual term “shit”.
  • All 39 pending applications were filed in 2016.
  • 1st  and only trademark registration is actually on the term is actually DEMSHITZ, filed 2009.

SLUT
  • The first registration was granted in 1990 after only 1 year.
  • 145 total applications filed.
  • 43 are still alive today, 32 of which have achieved registration.

 
TITS
  • The earliest registration was granted in 1987 for cake (excluding foreign words)
  • 87 total trademark applications using the term.
  • 19 are still alive today, 14 of which have achieved registration.


TURD
  • The earliest registration was granted in 2006 for plumbing services.
  • 34 total trademark applications using the term.
  • 11 are still alive today, 6 of which have achieved registration.

 
VAGINA
  • The earliest registration was granted in 2005 for medical services.
  • 52 total trademark applications using the term.
  • 21 are still alive today, 17 of which have achieved registration.

WHORE
  • The first registration was granted in 1990 after only 1 year.
  • 129 total applications filed.
  • 43 are still alive today, 32 of which have achieved registration.

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<![CDATA[THE “INTERNET OF TRADEMARKS” – HOW CHANGES IN THE TRADEMARK INDUSTRY ARE KEEPING PACE WITH THE INTERNET REVOLUTION]]>Wed, 01 Jun 2016 16:15:29 GMThttp://e-trademarkuniverse.com/2/post/2016/06/-the-internet-of-trademarks-how-changes-in-the-trademark-industry-are-keeping-pace-with-the-internet-revolution.html Many people have not yet realized that the changes to the various computer operating systems are more than just aggressive upgrade tactics by Microsoft, etc.  The “Internet of Things” is already here, and the operating systems must be in place to support that change. 
In July of 2015, I was hit hard by the Internet Revolution.  In December, I finally dropped Microsoft after fighting (and losing to) Windows 10.  My third world Internet connection couldn't handle the incessant, unauthorized and deceptive behind the scenes bandwidth usage.  6 months and over $1000 later, I switched to Linux Ubuntu which has given me 6 trouble free months of reliable, inexpensive Internet.  That was my most painful change to date, but I continue to experience changes daily, all around the world.

The “Internet of Trademarks” is changing too.  The trademark industry worldwide is keeping up with technology and keeping trademark professionals on their toes as they roll out one change after another to their on-line systems to keep pace with worldwide trademark trends and system upgrades.

For the last several years, most of the more technologically advanced countries around the world have been updating / upgrading their trademark systems.  Sometimes, there are changes from morning to night on the trademark search or filing page; week to week is very common.

I highly recommend the new “worldwide trademark search” in which over 40 countries' trademark offices currently participate.  TMVIEW – https://www.tmdn.org/tmview/welcome.  I find it a bit fickle at times, but it is a valuable tool which will become more stable as it matures.

Some of the vast changes seen in the last 6-24 months to on-line trademark systems are:

Canada – CIPO
     
  • A gradual change to incorporate the NICE class code system, not yet in full use,but coming along very nicely.
  • A customer number is now required.

USA – USPTO
          
  • The ability to search both pending and registered trademarks from the same search screen. 
  • Renewal reminders now sent via e-mail, and all documents are available on-line in a very timely manner.

EU – EUIPO            
  • The EU is 28 countries and took the name EUIPO March 23 (dropping the name OHIM), changing its pricing structure at the same time.
  • Available in multiple languages.  Opposition documents on-line.
  • The information is updated in a timely manner.

China – SIPO
  • On-line search & status capability in both English & Chinese. 
  • The information is  updated in a timely manner, and it has a nice translation feature to English.

Of course, progress does not come without a sacrifice.  The sacrifice nowadays in most cases is in timeliness & reliability in being able to access the websites.  Either the trademark website is not working reliably yet (SIPO), or it's undergoing regular changes behind the scenes that is causing unanticipated outages on the site, day or night (such as EUIPO, USTO, and the TMVIEW). 

To pay for these these technological updates, in some cases, there have been increases to the trademark filing fees, some of which are enormous.  UAE, Saudi Arabia, and Venezuela have increased their prices by 200%+. 

The USPTO, however, was able to reduce the trademark filing fees several times over the last few years, as the technological improvements to the trademark filing system reduced the cost of processing the application, even as filing volume continues to increase yearly.

EUIPO changed its price structure along with its name, effective March. 

Japan, Jordan, Kuwait, Mexico, and many many others have changed their trademark fees.

And of course, WIPO has been evolving for many years and is used by many.  It is not, however, always the easiest nor least expensive way to approach international trademark filing, however.

The trademark process worldwide is an evolving entity.  If you have not checked out the price and process lately...you should do so now.  Due to technology and recent upgrades to the “Internet of Trademarks”, it's easier, quicker and more affordable than you might expect.

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<![CDATA[DON'T BE SCRAMBLING FOR THE RIGHTS TO YOUR OWN BRAND NAME AFTER YOU ARE ALREADY IN BUSINESS.]]>Tue, 08 Mar 2016 19:01:54 GMThttp://e-trademarkuniverse.com/2/post/2016/03/dont-be-scrambling-for-the-rights-to-your-own-brand-name-after-you-are-already-in-business.html THE TRADEMARK PROCESS SHOULD BE INCLUDED EARLIER RATHER THAN LATER IN THE FORMATION OF A BRAND.

All too many times the trademark is an afterthought, often for budgetary reasons.  As a very small business, I understand budget and cash flow very well.  When you wait, however, for the business to become too well established, then you run the risk of having to change your name.  Penny wise and pound foolish my mother always said.

So when just this very morning a new customer said to me, "I can't change my name.  I must get this trademark registered, the business is built around it...since 2014”, I felt compelled to remind (sm)all businesses, don't wait to start the trademark process.

It is 4 simple steps:     
free search / professional search / registration filing / issuance of certificate

Yes, you are on a very tight budget, possibly waiting for the actual sales to fund future expansion, but securing your trademark is part of the start up costs.  It should be an integral step that should not be skipped.

  1. You can start free here in the TMView, which has about 40 searchable countries so far.              https://www.tmdn.org/tmview/welcome
  2. If there are no “exact hits”, you can take the next step: get a search prepared by a trademark             professional with the experience to look at the “similar hits”.  This is not too expensive in most             countries.
            Similar hits might be:

  • phoenetic spellings                  vane / vein / vain / fein / fain / fane / wein
  • translations                              air / aire / airo / aero / ayro
  • coordinated class codes          (029/030...025/014...035/042)
  • merely descriptiveness            does your brand merely describe your product or service ?

    A good search report will include all of these things (varies by country), and short opinion to boot.

    3.  The trademark registration process does not have to be that expensive, and you can expand
         country by country, as your budget allows.  One of my oldest customers started in 1998 with 2 brands
         in a single country, and now those brands have registered in over 100 countries each.
         Start always with country of origin.

If you are going to have a problem with the name, better that you find that out before investing time and money in promoting a name that might eventually have to be changed or litigated.

Do not neglect the very important aspect of trademark protection when planning the future of your new brand and company.

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<![CDATA[THE NEW YEAR & A STRONG DOLLAR = SAVINGS ON INTERNATIONAL TRADEMARK PROTECTION]]>Fri, 22 Jan 2016 14:19:09 GMThttp://e-trademarkuniverse.com/2/post/2016/01/-the-new-year-a-strong-dollar-savings-on-international-trademark-protection.html I love the new year.

I am psychologically reset and energized every January. A clean slate on which to be just a little "more" (or “less”) this year than I was last. I set new goals and allocate my new budget.

If you are doing the same, don't forget to allocate “international trademark protection” in your budget.  If you are considering expanding your brand overseas, NOW is the time of year to start your global brand expansion..

Here are just a couple of reasons that trademark owners should strongly consider expanding their brand's international portfolio in 2016, earlier rather than later.

  1. The strong dollar in most currencies means that it costs you less to buy something foreign (such as a trademark filing). The dollar is expected to weaken over the course of the year.
  •  in Mexico the IMPI has raised trademark fees, but the Pesos' steady decline against the dollar means foreigners will hardly feel it. Exchange 18.22 Pesos to USD$1.
  •  in the European Union rates will change on March 13...the OHIM will be called the EUIPO... and a CTM will be called an EUTM. Exchange .92 Euros to USD$1.
  •  in Turkey the TPI has raised rates, but because of the favourable Euro USD exchange, is now less expensive to those paying in USD.
  • in Kuwait the MCIPT raised rates up to 15 fold on some filings...Venezuela, Argentina, Saudi Arabia and UAE all made similar moves in 2015. Help offset these huge increases by paying in Euros, where your "dollar" goes farther.
    
     2.  Several countries are expected to increase prices sometime in 2016. You should file in some places
          before that happens: EU (28 member countries), India, and Bahrain, among others.

     3. Some countries have recently de-creased their trademark fees: Brazil, USA, China, and EU to name a few.

Think you can not afford an international trademark ?  Think again.

Think instead, “this is the year I can afford to expand brand X worldwide!”

Act quickly before the dollar begins its inevitable decline]]>
<![CDATA[ CAN I USE THE WORLDWIDE FAME OF MY TRADEMARK TO OVERCOME LITIGATION SITUATIONS ? ]]>Tue, 17 Nov 2015 13:10:04 GMThttp://e-trademarkuniverse.com/2/post/2015/11/-can-i-use-the-worldwide-fame-of-my-trademark-to-overcome-litigation-situations.html“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.

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