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Trademark Application Process: Filing Strategy

Intellectual Property FirmsProtecting a mark in various jurisdictions requires planning and forethought as part of an IP strategy. Which countries to file in, where to file first, and whether to file nationally, or through the “Madrid System” are among factors to be considered in a trademark filing strategy and budgeting process.


One is well advised to consider filing in the countries where one maintains business under the subject trademark. Other countries in which the trademark owner wishes to expand business activities should also be considered. However, it is important to keep in mind the applicant’s budget, not just for filing, but for the costs (and their scheduling over time) involved in the application process, prosecution, renewals, and policing of the mark as well. Intellectual property firms specialize in such activities.


If one plans to file in numerous countries that are members of the Madrid System, it would be beneficial to consider filing through the Madrid System (and designating the selected countries), as opposed to filing separately in each country.


In order to decide the country for filing a trademark application as the basis for the Madrid filing, several factors must be taken into account in the IP strategy. Since any successful attack on the basic application or denial of the registration in the base country would subsequently affect the status of the Madrid application, one must be mindful to choose the base country very carefully. Factors such as performing a thorough clearance search, consulting with or representation by a local trademark attorney, and being familiar with and conforming to the requirements for submitting the application in that jurisdiction are helpful in improving the chances of survival of the basic application as the backbone of the Madrid filing.


With regard to a Community Mark (renamed the European Union trademark on March 23, 2016) under the CTM system, the higher the number of member states chosen for filing, the more advantageous it is from an economic point of view to file through the CTM system. If a trademark owner will only sell products or deliver services under the trademark in fewer than three or four member states, and has no intention of expanding to other CTM countries, one is well advised to consider registering in those countries locally, rather than applying for a CTM.


While economically advantageous at the outset, a CTM application can become less attractive if it encounters a serious objection from OHIM (renamed to the EUIPO, the European Union Intellectual Property Office, on March 23, 2016). Although an applicant for a failed CTM application may be able to salvage the situation by converting the CTM application into one or more national applications, the applicant cannot recover the costs of filing the CTM application. Thus, the cost of the new national-application filings becomes an additional expense.


Another point to keep in mind in developing an IP strategy when deciding to apply for a CTM is that since a Community Mark can cover all member countries through one application, the applicant bears a higher risk of opposition by third parties who consider the filed mark in the CTM application to be in conflict with their trademark rights. Such opposition jeopardizes the entire CTM application. Should the opposer succeed against the applicant in such a situation, one needs to consider the above-mentioned option of converting the CTM application into national applications which involves further filing costs.


Intellectual property firms specialize in weighing the tradeoffs in the process. FPIP trademark attorneys are experts at considering the particulars of a business activity, its goals and concerns, advising our clients regarding trademark options, and assisting in formulating a trademark filing strategy that best suits each client’s IP strategy and position.


FlashPoint IP, a leader among intellectual property firms, provides all types of professional trademark searches for registered and unregistered marks worldwide, as well as national and international trademark registration. We assist in the candidate selection process of brand names to maximize IP value and protection. Contact us to discuss your options regarding IP strategy and positioning, and to find out more about FPIP trademark filings. On Your Mark, Get Clearance, Go!