SME FAQs

By Scott Rogers (Ulmer & Berne LLP, USA) and Michael Best (Best Rechtsanwälte, Germany)

In all but the rarest cases, it makes no sense to register your trademarks in as many countries as possible or even on a “worldwide” basis.

As a rule, there are two places to start. Protect and register your trademarks (1) in countries where you are currently selling your goods or services; and (2) in countries where you may realistically sell your goods or services within the next three to five years.

In addition, it may make sense to protect and register your trademarks in countries where the goods using your trademarks are manufactured, even if those goods are not sold there. Doing so may block a third party from registering your trademarks, which is important because such a registration could prevent you from exporting your goods.

Should it later turn out that you will use your trademarks elsewhere, you should take immediate steps to protect and register your trademarks in those countries too.

If you are selling goods online globally, deciding where to register your marks can be more complicated. In such cases, consider registering your marks in the following places:

• The countries where you have the highest volume of sales;
• The countries where you can obtain rights in your trademark through use alone;
• The countries where the risk of trademark squatters, knockoffs, and counterfeit goods is higher;
• The countries where you would suffer significant damage if a third party has already registered the same or a confusingly similar trademark.

By AnneMarie Sheridan (Conair Corporation USA), and Jeff Lindenbaum (Rothwell Figg, USA)

There are three general categories of costs that you may incur when seeking to register a trademark: (1) pre-application costs; (2) application and other pre-registration costs; and (3) post-registration costs.

Pre-Application Costs

Before you apply to register a trademark, it can be valuable to conduct a search to make sure the name or tagline of the mark is not already registered or being used by another company. This could save you time, money, and a future conflict.

In many countries, you can conduct a free search on the website of the national trademark office. Costs can vary from country to country. In the United States, for example, a preliminary search on the United States Patent and Trademark Office (USPTO) website can cost as little as US $200–300, and a full search can be US $1,500–2,000 or more.

Application and Pre-Registration Costs

There are two different types of application costs: (1) mandatory trademark office fees; and (2) attorney fees.

Procedures and requirements vary from country to country, and most trademark offices categorize goods and services into classes. Again, using the United States as an example, the USPTO fees for filing an application are either $250 or $350, depending on the type of application filed. This covers one class of goods or services. So, for example, T-shirts and hats are in one class, but you will need to file two applications in two classes if you want to protect the mark for T-shirts and backpacks. If you file for more than one class, you typically must pay additional fees for each additional class.

Post-Registration Fees

In most countries, a registration does not last forever and must be renewed after a certain number of years, normally seven or ten years.

In the United States, after the mark is registered, it must be renewed before the six-year anniversary at a cost of US $225 per class, and then at every ten-year anniversary at US $300 per class.

Attorney Fees

It is often advisable to hire an experienced trademark attorney to clear, prepare andfile, your application. Many attorneys will do this work for a flat fee, while others will charge an hourly rate. Again, fees will vary depending upon the country. In total, you should be prepared to spend about US $1,000 in attorney fees for each application.

By Kellie Jukkola (Michael Buck IP, Australia) and Marc Fineman (Levenfeld Pearlstein, LLC, USA)

There are companies that access publicly available information to obtain fees from unsuspecting trademark owners. You may receive invoices and other “official-looking” correspondence sent to you by agencies that are not authorized to act on your behalf.

Be wary of any invoice that demands payment of heavily inflated or surprisingly low fees for a trademark maintenance filing, or that suggests you can protect your trademark via placement on an international trademark register.

Before paying any invoices, check the following:

• Is the invoice from a trusted attorney or the official intellectual property office in the relevant country?
• What is the actual cost of renewal? Be sure that any service charge above the official renewal fee offers you value for your money.
• Is the company that sent the invoice known to send phishing invoices? Examples of phishing invoices and scams can be found here and here.