A trademark assignment is the transfer of ownership of a mark. This usually entails having the owner transfer all its rights, title and interest in a given mark to a third party.
Sounds pretty straightforward, right? Well, imagine you’re not just assigning one trademark to a third party – instead you’re transferring an entire portfolio containing hundreds of marks in dozens of countries. Generally, this transfer of rights must be documented – or recorded – with the trademark office in every jurisdiction where marks have been assigned. Otherwise, the outdated Trademark Office records relating to the ownership of a mark could cause issues, like blocking new applications filed in the new owner’s name. The requirements for assigning trademarks and recording this transfer of rights often vary by jurisdiction, so handling the transfer of a global trademark portfolio can become a major undertaking.
With Halloween just around the corner, our “treat” for you is some of our favorite “tricks” we’ve picked up along the way when managing the assignment of trademark portfolios worldwide.
If you’ve got it, “haunt” it. If budget permits, ask local counsel to conduct a search to confirm that your assignment covers the entire universe of marks to be transferred in a given jurisdiction. If any marks are inadvertently excluded from the assignment, you may have to go through the entire process all over again (and pay double the fees – boo!).
Get your “pumpkins” in a row. Generally, at the outset of a global assignment project, we like to ask counsel in each relevant jurisdiction to confirm the local requirements for assigning a mark, and to prepare any documents required to record the trademark assignment in their jurisdiction’s trademark office. Ask counsel whether the assignment documents require notarization or legalization, and whether original documents are required. Nailing down counsel’s answers to these questions as soon as possible can save some back-and-forth when arranging for execution of the documents.
Decide “witch” way to assign your marks. Do Trademark Office records reflect the current owner’s correct address? Maybe not – for instance, you might have been waiting for the next renewal deadline to update the owner’s address associated with a particular registration.If some of the addresses aren’t current, ask counsel if it’s possible to record multiple assignment documents – that is, one document per address. Sometimes filing multiple documents can be quicker and less costly than first updating the addresses and later assigning the marks together in the same document.
Note any “dead-lines.” Depending on the type of transaction driving the trademark assignment, time may pass between the effective date of the assignment, and the date that documents are filed to record the assignment in a given jurisdiction. And beware! In some jurisdictions, waiting too long to file these documents could create issues or require the payment of penalties.
Determine “how-l” and when to assign pending applications. In some jurisdictions (e.g., Egypt), it’s not possible to record the assignment of a trademark application. In cases like these, be sure that your docket reflects the need to ask local counsel about recording an assignment for the pending application as soon as it matures to registration.
While all these tricks may not apply to your trademark assignment, here’s hoping they make the process at least a little less scary!
US trademark aficionados know that US registrations depicting logos in black and white allow the trademark owner to display the registered mark in any color. Filing in black and white is often a good way to achieve broader protection in the States, and it helps avoid your having to file a new application if you change the color of your logo in the future. The next time you want to protect your logo outside the USA, however, pause before you send that email to local counsel or submit your Madrid Protocol application depicting the logo in black and white. It’s not safe to assume that a black-and-white registration outside the USA confers “universal” protection for a mark displayed in any color.
To elaborate: counsel in a number of jurisdictions have informed us that black-and-white registrations may not protect marks displayed in any color. We’ve heard this from the EU, Kazakhstan, and Thailand, among other places – though you will of course want to check this with your own local counsel, since this is a fact-specific issue. Worse yet, black-and-white registrations outside the USA may be subject to attack on non-use grounds if the trademark isn’t used in black and white. (How often does that happen?!)
We haven’t run across a treatise or other resource that drills down to this level of trademark nerddom, so this might be a good topic to add to the next edition of the Country Guides (accessible to members of the International Trademark Association). In the meantime – now you’re equipped to ask some more pre-filing questions, to help ensure that your future logo applications will achieve maximum protection.
There are refusals, and then there are refusals, and a “likelihood of confusion” refusal (also called a “Section 2(d)” refusal in the US) is certainly of the latter variety. But most times you don’t need to be an expert navigator to traverse these choppy waters and successfully sail your application through to registration. All it takes is a little bit of “pathfinding” (investigating) on your part, and “charting a course” (developing a strategic approach) for moving forward.
And then I ran out of explorer metaphors.
As consolation, here are some thoughts about how to approach and respond to these kinds of refusals, which are among the most daunting. Some, but not all, of the tips below apply equally to “likelihood of confusion” refusals encountered in the USA and in trademark offices abroad.
It’s a typical afternoon in the office. You’re taking a look at the watch notices your trademark watching service has recently forwarded for your review – when all of a sudden, you come across a third-party application filed outside the USA for a mark that looks an awful lot like one of your brands.
So, what do you do?
Time to get in touch with local counsel to figure out whether it’s advisable – or even possible – to challenge the registration of this application in their country.
Below, we list some of our favorite tricks for quickly and efficiently getting all the information needed to determine next steps and avoid surprises. (Pro-tip: Drop all your questions for counsel into a single email when you have a looming opposition deadline and time is of the essence!)
The very first step is to make sure counsel doesn’t have any conflicts helping you out – this is an important one!
Worried about deadlines? Confirm with counsel that the opposition deadline is the date listed on the watch notice (beware – they don’t always match!), and ask if extensions are available.
When asking about estimated costs, we like to know the “worst case scenario” – that is, the total fees and expenses when dealing with an applicant who aggressively contests the opposition. Knowing this information up front can help to avoid some unpleasant billing surprises!
Though you’ll want to understand your chances of succeeding in any opposition, it’s a good idea to get the whole story. Could this applicant turn around and challenge the registration of your brands in this or another country? Be sure to discuss the risks of opposing with counsel.
Immediately ask whether a Power of Attorney or other documentation will be required. If you decide to oppose at the last minute, you’ll already have the document in hand and can simply sign and return it to counsel. If you’re told legalized documents are needed, consider asking whether PDF copies will suffice to meet the deadline.
Finally, don’t forget to give counsel a head start – in addition to forwarding the watch notice you spotted, let them know about the relevant applications and registrations you own and any history you might have with the applicant.
Taking advantage of these tips and tricks will help you make the most informed decision possible going forward. And the sooner you can deal with a potential infringer, the better!
Our corner of the IP world is chock-full of minutiae – powers of attorney, legalized declarations of intent to use, merger certificates, you name it. So how do we manage all those details and still meet dozens of filing deadlines every week?
Seriously, here are a few tricks we use to tackle foreign trademark filing and renewal requirements. These tactics help us meet deadlines with time to spare, and without having to go back to our clients multiple times to request additional documents. We’re all about efficiency!