International Trademark Clearance: Why is it so hard to get a trademark worldwide?

Attorney Michael Lasky explains why it is so hard to obtain a trademark across the world.

Contact Michael Lasky

Email: [email protected]

Phone: (404) 441-1750 or (952) 253-4106

Transcript:

Hi, my name is Michael Lasky.  And if you’re watching this video, it’s probable that you have a plan of taking your product international and the issue that’s come up is “Can I have my trademark in all the countries I need?”

The title of this video is “Why is it so hard to get a trademark worldwide?” And it is very hard.  And it’s not bad luck.  There is a systemic problem.  And you need to tell you about it because it’ll help you get through it.

First, you have to understand how we analyze trademarks in the United States.  The test for trademark infringement in the United States is whether the mark is confusingly similar.  In other words, does it look alike and is the in the same channels of trade?

So, take a look this Starbucks constellation.  We have Starbucks and a bunch of undoubted infringers.  And they are all coffee shops, so they are all in the same channels of trade.  No question about that.  Perfect overlap.  And the marks are similar in the way they look.  So it meets, most likely, the test of infringement.

Now, let’s take another one.  This is kind of a bizarre one.  We have Louis Vuitton luxury goods, a purse, handbag.  And then we have Chewy Vuiton, which is a dog chewy toy.  And here’s Fido with his Chewy Vuiton.

So is it in an infringement?  Well, the marks are pretty similar.  Chewy Vuiton, Louis Vuitton.  That’s really close.  Are the channels of trade similar?  Luxury purses and dog chewies.  And the court said, “No.” So in the U.S. infringement trademark analysis, it is not an infringement.  I don’t know if you agree with it.  I certainly don’t.  But it doesn’t make any difference.

Now, you understand how it’s done in the United States.  Here’s the problem for foreign countries.  Their analysis is based on the international trademark classification system.  When you register a trademark, it falls into one of 45 classes.  The whole world of goods and services has to fit into one of 45 classes.

But let me show you arcane this thing is.  This is Class 9, one of the biggest classes of all.  Many, many products fall into there.  Look at how bizarre this combination is.  Nautical goods, cinemagraphic goods, software, and fire extinguishers, amongst a bunch of other electronic and nonelectronic things.  They’re all in the same class.

You’re saying, “Great.  Why do I care?” Because in a lot of countries, infringement is determined on the basis of the class number.  Not the channels of trade analysis I just showed you, but class number.

So, take a look at iPhone, which is in Class 9, 28, and 38.  It doesn’t matter.  Let’s stick with Class 9.  An iPhone in Class 9.  Let’s suppose we registered in the United States, and now we realize this is a smash hit.  We’re gonna take it to all kinds of countries.  And we go to a country like China, a very good example, and someone has registered iPhone.  I made this up.  It’s not true.  Registered iPhone for fire extinguishers in Class 9.

So, the trademark office says Class 9, Class 9, same trademark.  We don’t do a channels of trade analysis like we do in the states.  Therefore, we will not grant you your trademark.  So, look, they’re not making anything close to the iPhone product, yet you can’t a registration.

And in most countries, if you can’t get registration, you can’t use the trademark because the guy with the earlier registration has the right.  That’s why it is so ridiculously hard to get foreign trademarks.

The point of this is, statistically, what’s the chance you’re gonna clear a trademark in 180 countries?  The chances are very small.  The way to avoid that is to use really strong trademarks.  And most importantly, if you have any possibility of taking your product out of the United States, do the search of foreign countries at the same time as you do the search in the United States so you know what you’re getting into.

And that’s why it’s so hard.