An international trademark application filing program can be a very expensive undertaking. As a general rule, the costs associated with a filing program are on a per mark/per class basis and include the government filing fee, an associate's fees for the preparation, filing, and prosecution of each application, as well as our fees in working with the client to gather the necessary information, instructing associates, and coordinating the process. Because of the expense involved and the desirability of allocating resources wisely, we work closely with clients to identify and prioritize the marks, countries, and classes that make sense for each client. This process of identification and prioritization includes consideration of a number of different questions and issues.

There are two basic reasons to register a mark in a particular country. The first is to establish ownership of that mark and thereby enable the registrant to control use of the mark, police infringements, and take advantage of the benefits that accrue to the owner of a mark. This first reason is often referred to as the “offensive” basis for registration. The second is to prevent others from acquiring rights in your mark and thereby gaining the ability to interfere with your ability to use and enjoy your mark in that country. This is a “defensive” rationale for registration. In most countries ownership of a mark is established by registration and not use of a mark and therefore preventing the registration of an important mark by others in key countries can be of significant importance even if you do not intend to actively use your mark in those countries.

Due to the costs associated with the filing of applications overseas, it is generally not realistic to file applications for every mark in every country that one might identify for offensive and defensive registration purposes. Thus, the next step is to prioritize the filings. The first priority is countries where you are currently using the mark at issue, or are likely to begin using the mark within the next twelve to twenty four months, as well as countries that have been identified as critical for defensive purposes. The second priority is countries where you are likely to use the mark within the next five years, and the third tier of countries is those where you have a reasonably good chance of using the mark at some indeterminate point in the future. If a client has unlimited resources to devote to an international filing program, then filing in all the countries identified in the three levels of priority may be appropriate. Where resources are limited, it is best to direct the available resources to the first priority countries and address the second priority countries as resources may allow.

With a few notable exceptions such as Canada and the European Union, the charges associated with the filing of an application are on a “per class” basis and therefore it is important to consider which classes to claim in each country. Generally a client can identify one or two core classes that provide adequate protection without having to register in every class that its goods or services might touch upon. The core class(es) can be identified by considering what products and services using the mark at issue will be sold or offered in each country. Alternatively, the question can be turned around and consideration given to the classes that, if not available to the client due to the later registration of another, would cause significant harm or inconvenience to the client.

With the foregoing considerations in mind, the questions that a client must ask of itself in formulating an international filing program include:

What is the likelihood that this mark will be used by the client in any meaningful way in country X?

When will such use likely begin?

What harm will befall the client if it is not able to use this mark in country X?

What is the level of harm?

What does registration of this mark in country X contribute to the business of the client?

Is the ability to use the mark in country X important to the client's revenue stream or ability to conduct business?

Will revenue generated from the mark in country X exceed the cost of registering the mark in that country?

Is this a mark that is likely to be attractive to others and therefore at risk of being registered and/or infringed by them?

Does the mark qualify for registration, ie., is it inherently distinctive or has it acquired distinctiveness (secondary meaning)?

Is the mark adequately protected by applications or registrations for related marks in country X?

Where a mark is closely related to another mark that is the subject of an application it is often unnecessary to file a separate application for the variation. This is most often true with design marks. If the words in the design mark are protected by a block style application, then unless the design has an inherent value separate from the words, it generally is not necessary to separately register the words and design combination.