“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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