World Trademark Review November/December 2007 www.WorldTrademarkReview.com36

Roundtable By Joff Wild

The creation and management process iswhere much of the real value of a brand iscreated and then maintained. Developing abrand, putting in place the proper types ofprotection and then ensuring that no onecan trade off its reputation are thereforecrucial to businesses working in all mannerof industries. Get anything wrong and it cancost a great deal to put right.

In this special roundtable, experts intrademark law and brand developmentdiscuss some of the crucial issues. Takingpart are Jody Drake of Sughrue Mion PLLC inWashington DC; Andrea Klein of SocietàItaliana Brevetti SpA in Rome; Friedrich GrafLuckner of CMS Hasche Sigle in Hamburg;and Thomas Sjöberg of Essen InternationalAB in Stockholm.

How does a brand differ from a trademark?

Andrea Klein: A trademark is the signwhich distinguishes the goods or services ofone company from another: its role is a roleof recognition.

A brand would include, in addition tothe trademark, the personal identity of agiven product or service, or a line ofproducts or services. It should be able toconvey information about the valueassociated with the trademarked product orservice and possibly make it unique.

Friedrich Graf Luckner: This is a questionthat is both interesting and difficult. Brandsand trademarks are identical and different atthe same time. Most trademarks will beexpected, by their registrants, to have thepotential to become a brand. There may bebrands, on the other hand, which will neverbecome a trademark; because, for instance,they consist of descriptive terms. A closerlook reveals that ‘brand’ is a term which has a

wide scope, while ‘trademark’ is a legal term.A brand is a way of identifying goods or

services. A trademark is an IP right madeavailable by nationally or internationallyapplicable regulations and in the greatmajority of cases it is subject to registrationby specialist authorities. Roughly speaking,one can say that ‘brand’ is a term largelyused by marketing people, while ‘trademark’is a right granted by states and applied for,prosecuted, asserted and, if need be,defended by attorneys. Both brands andtrademarks can cover every item thatdistinguishes the goods or services of onecompany from those of another.

Thomas Sjöberg: ‘Trademark’ is the legalterm for a name, symbol, design etc thatdifferentiates one company’s products orservices from those of others. Thetrademark can be registered and thus, orthrough use, become an exclusive legal rightfor its owner.

A brand is the communicativedimension of the trademark, representingall associations that the audience connectsto a trademark.

The brand and trademark are essentiallytwo sides of the same coin – the brandidentifying a company or organization andcarrying the associations and perceptionsconnected to it, and the trademarkrepresenting the legal rights to thefundamental expressions of the brand. Thevalue lies in the brand, as it represents theability to obtain a price premium, customerloyalty and other benefits. If, however, theowner of a brand does not have legal,exclusive rights to it, the value can bedecreased or erased.

From a trademark perspective, what is theideal time for a trademark expert to get

involved in the brand creation process?

Jody Drake: As early in the process aspossible. The marks that are intended tohelp build the brand will be valuable assets.The time and energy directed to clearing themarks for adoption, use and registrationconstitute the most important step relatingto the early interest and commitment toadopt a mark and build a brand.Understanding and evaluating risks duringthe clearance process must involvetrademark professionals at the earliestpossible stage.

TS: Jody is right: the trademark expertshould get involved as early as possible. It isessential that the selection or invention ofthe word or symbol includes legal aspectsand the protection possibilities. It must bepossible to protect the mark in all presentand future markets, and it is also necessaryto investigate whether the mark is suitablefor its purpose in all markets.

A new brand should be evaluated fromseveral perspectives from the start: itsability to represent the brand promise andpersonality; its relevance according tomarket, customer and competitorprerequisites; and its ability to become an exclusive asset for the brand owner. An integrated working process withdifferent specialists (trademark experts,brand consultants, designers, linguists)working closely together is thereforeessential for success.

FGL: From the trademark perspective, it iscertainly ideal for a trademark expert to getinvolved in the brand creation process asearly as possible. Every newly created brand should be registrable as a trademarkso that investments into that brand may be legally protected. The trademark expertnot only will help to avoid the creation ofbrands which subsequently turn out to be unregistrable, but can also effect searchesin order to establish whether there are existing trademarks that could be confusingly similar. The trademarkexpert, finally, is able to assess risks and thechances of enforcing the trademark once itis registered.

Building the brand

Four experts discuss some of the crucial issues affecting brand creationand management

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Co-published editorial

AK: Obviously, a trademark expert shouldbe involved in the brand creation process asearly as possible. In order to help avoidunmanageable results from the protectionpoint of view, he should consider thestrategies of brand creation likely to be usedand explain all the pitfalls to be avoided, aswell as the risks or advantages of alternativeapproaches.

In some organizations it can be hard to getnon-trademark experts to understand theimportance of the contribution trademarkexperts can make to the brand creationprocess – how can trademark people beststate their case?

FGL: In most situations, trademark expertswill best state their case by explaining thatthe trademark of a business can easilydevelop to be its most important andvaluable asset, and should therefore bethoroughly examined in advance. Theyshould make it clear that money invested intrademarks without prior competent advicefrom trademark experts can be wastedmoney; for instance, because trademarks canprove to be unregistrable or confusinglysimilar to a competitor’s trademark. Risksinvolved with the launch of a trademarkwhich has not been thoroughly assessed inadvance can easily materialize, causingsubstantial financial losses as a consequenceof disputes, litigation and the like.

JD: Friedrich’s final point is a crucial one.The best way to convey how important it isfor the experts to be involved in brandcreation is to be clear that ultimately itcould cost a company dearly to discoverafter launching the brand’s marks that thecompany has inadvertently infringed a thirdparty’s mark. Pulling advertising, changing

packaging and paying to settle a dispute isnot a situation a marketing or legaldepartment wants to explain to the chiefexecutive officer.

AK: A trademark expert should be veryresolute in explaining the risks of wrongstrategies and he should clarify them withexamples of cases where mistakes havebeen made. However, the capability of beingpersuasive is an art or at least a professionalskill which one should acquire througheducation and experience.

TS: One key success factor is certainly toeducate the management team. Even todaythere is often a lack of trademarkcompetence in boardrooms and at theexecutive management level.

Another key issue is to integrate thework of the communication and legaldepartments. A common mistake amongtrademark experts is a narrow and limitingperspective that excludes all considerationsapart from the legal ones. Trademarkpolicies and actions should always be areflection of the business and brandstrategy of a company. A narrow legalperspective often leads to trademarkregistrations and activities that do notreflect the business and brand rationale –for example, too many registrations orregistrations of variations that should notbe used. A trademark expert whounderstands branding, not only trademarkprotection, will have the ability to supporthis or her clients in creating integratedprocesses between communication andlegal departments that ensure that what iscommunicated is protected and vice versa.

Once a trademark person is involved inthe brand creation process, what are

the crucial points he or she will need todeal with?

TS: The main contribution of a trademarkexpert in a brand creation process will focuson continuous evaluation of the legalpotential of what is created. Ensuringsufficient budgets and time schedules forprofound legal checks and evaluations istherefore crucial.

In order for the trademark expert toavoid being perceived as a hindrance to thecreation process, it is important to design asystematic approach to legal checks andevaluations. For example, quick preliminarychecks are done on a large number of namesearly on, and then the checks and evaluationsbecome deeper as the number of namesdecreases until there is a final candidate.

An important contribution from thetrademark expert is to ensure a broad namegeneration process. The trademark adviserknows from experience that many nameswill fail a legal or linguistic evaluation, andthat it is therefore dangerous to work with alimited number of candidates in the earlystages of a process. By ensuring a systematicand professional process, the trademarkadviser can help save time and money, andavoid disappointments.

AK: If a trademark expert is involved fromthe earliest stage, it is crucial that thecreation team understands the protectionproblems linked to the kind of mark theteam wishes to select – be it a name, a logo,a label, a slogan, a sound or anything else.Furthermore, all possible or prevalent waysto use a mark should be identified as therecould be different problems if consumersare meant to recognize the brand onlyvisually or aurally, for example.

The clearance process should be agreedupon in advance, as well as the importance

The fundamental consideration is that the trademarkprotection should always be in line with the business and brandstrategy ... Unnecessary registrations or registrations that arenot in line with the strategy are costly and can actually damagethe vital assets that should be in focus

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Roundtable: Building the brand

of carrying out trademark and domainname preliminary searches, even limited inscope, at an early stage of the brandselection process in order to avoid spendingtime and money on trademarks whichclearly appear to be unavailable.

The geographical extension of use isimportant, too, in order to identify languageor semantic problems. If the trademark isfor a product or service made to last, it is amistake not to consider possiblegeographical extension at a future time.

JD: It is important to consider the quality ofa proposed mark, meaning: is the markcoined and strong, or is the mark merelydescriptive and weak, and therefore moredifficult to register and police? The clearanceprocess must be conducted quickly andthoroughly, and it is important to considerwhat the intentions are for the actual use ofthe mark in the context of foreign markets.Not only should critical markets beidentified, but manufacturing locationsshould be considered as well whenestablishing priorities for a trademark filingprogramme, so that a trademark portfoliocan be developed as early and systematicallyas possible. Obtaining filing dates for marksin pertinent countries where sales andmanufacturing will take place is animportant step in connection with theultimate enforcement of the mark. In otherwords, establishing priority for the markahead of pirates, in particular, is animportant anti-counterfeiting consideration.

Cost is always a factor, as it is veryexpensive to register marks worldwide.Creating a tiered system for filing marksmay be an important consideration ifspreading costs over a period of time isrelevant to a company’s budget. It is alsoimportant to consider whether there is acommitment to use the mark for years tocome. If short-term use is anticipated,clearance is still critical, but registrationmay not be necessary.

FGL: To my mind, there are four crucialissues for a trademark expert to deal with: • establishing the distinctiveness of the

planned trademark; • establishing whether the trademark is to

be used only nationally or is alsointended to be used internationally;

• establishing whether a trademark whichmay be distinctive in one country is alsoconsidered to be distinctive in othercountries, or whether a trademark whichis very strong in one country has aninappropriate connotation in anothercountry; and

• effecting prior trademark searches, bothnational and international, as the casemay be.

What role can the outside trademarkadviser play in the brand creation processand how do companies go about findingthe best people to help?

AK: It is important to maintain asupporting role in the selection of a winning approach in the brand creationprocess. The trademark expert should helpto clarify the complex world of trademarkprotection while avoiding any appearance oftelling experts in brand creation andcommercial people what they should orshould not do; in other words, no invasionof the playing field.

The outside trademark adviser’s role isto be a consultant in the brand creationprocess, so companies should refrain fromgoing to expert trademark litigators or

lawyers who deal mostly with infringementsor licensing. The consultant should be ableto listen and explain, to summarizesituations to be avoided and to advise onthe most appropriate protection strategies.

JD: An educated marketing department andlegal department within a company as itrelates to protecting trademarks and otherintellectual property is critical unless theseparticular departments rely on professionaloutside IP counsel. The InternationalTrademark Association (INTA) and itsmembership are a good place to start if acompany needs to obtain outside trademarkcounsel on a global basis.

FGL: An outside trademark adviser canalways play an important role. An attorneywho specializes in trademark law, forinstance, will always have tools and/orcontacts available to effect trademarksearches and trademark applications withina short period of time. Once a company haschosen a trademark attorney, that attorneywill be able to provide contacts all over theworld. As Jody implies, an attorneyspecializing in trademark law will be amember of INTA, an organization that hasmembers in almost every country.

TS: In order to create integrated processeswhich ensure a holistic result, the brandcreation process should contain acombination of different expertise, of whichthe trademark adviser represents one.Ideally, the trademark adviser should bepart of an integrated team and involved inthe process set-up from the start. This iswhy we at Essen, for example, have chosento integrate trademark experts with brandconsultants and designers in the samecompany. This way, we can ensure that thebrand creation process is integrated andholistic, containing all perspectivesnecessary to create a foundation for asuccessful brand.

What needs to be considered whendeciding when and where to registertrademark applications, and how to do it?

JD: Expanding trademark rights outside theUnited States requires an analysis of thepros and cons of using the Madrid Protocol,using the Community trademark (CTM) inEurope or filing national applications.

The primary advantage for a UScompany to rely on the Madrid Protocol toextend protection into relevant countries isreally the cost factor and obvious savings to

Jody DrakePartner, Sughrue Mion PLLC, Washington DCjdrake@sughrue.com

Jody Drake is a partner with Sughrue MionPLLC in Washington DC. Her practice islimited to trademark matters. Ms Drake iscurrently vice chair of the TrademarkOffice Interpartes Committee for theAmerican Intellectual Property LawAssociation and is an active committeemember for INTA. She has also beenselected by the editors of Euromoneymagazine as one of the leading trademarkexperts in the United States, and was alsochosen to appear in the 2007 edition of theInternational Who's Who in TrademarkLaw. She was also named among the top 15IP lawyers in Washington by Legal Times inits 2003 Leading Lawyer series.

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Co-published editorial

the company by using this route. Adisadvantage is that the US owner canregister its US mark only if it establishes useon all the goods and services identified in itstrademark application; the same userequirements are not necessary when filingmost national applications outside theUnited States.

There may also be a disadvantage inrelying on the Madrid Protocol for a USowner, in that the US Patent and TrademarkOffice (USPTO) requires restricted languagewhen identifying goods and services,whereas national applications may providebroader language for ultimate broaderprotection for a company for goods andservices outside the limitations of the USregistration.

FGL: Trademark applications should be filedonce the decision for a specific brand hasbeen made. Good advisers will alwaysrecommend filing trademark registrationsprior to first use of the new trademark. Thetrademark should be registered in everycountry where it is to be used. In thisconnection, the registrant should take intoconsideration potential expansion to newcountries further down the line.

The question of what type ofregistration procedure to choose willdepend on the specific bundle of countrieswhere protection is required. Whileregistration procedures can be extremelyeffective, they can also be extremelylengthy, depending on the country. Inspecific situations, a bundle of nationalregistrations may be preferable. In othersituations, an international registrationusing the Madrid Protocol and based on onenational registration may be the mostappropriate way to proceed.

For companies which want to offer theirgoods or services only in Europe, aregistration with the Office forHarmonization in the Internal Market(OHIM) will often be the most appropriatedecision. Of course, these companies wouldhave to take into consideration that somecountries – such as Switzerland – are notcovered by an OHIM registration.

TS: The fundamental consideration is thatthe trademark protection should always bein line with the business and brand strategy.Creating solid protection for vital assets iscrucial. Unnecessary registrations orregistrations that are not in line with thestrategy are costly and can actually damagethe vital assets that should be in focus.

Of course, the trademark must beprotected in all the company’s markets. If

the company has a good idea about futuremarkets and expansion, it is advisable tobroaden the protection to these markets aswell. The registration cost is much lowerthan the damage the company suffers if itlater discovers that it is not possible to useand protect the trademark in a new market.

In Europe the CTM is often a goodalternative to national registrations becauseit makes it possible to cover all 27 memberstates in one go.

Determining which goods and services atrademark application will include shouldalso be done with consideration of futureexpansion possibilities and market changes.

AK: The needs to be considered woulddepend on the specific situation, necessitiesand time available. If early protection isneeded, in Italy we would suggest a nationalfiling first as even pending trademarkapplications may be enforced in courtproceedings against infringers.

If cost is an issue, internationalregistration, via the Madrid Agreement or

Protocol based on a domestic registration orapplication, which is in most casespreferable to separate national registrations,would allow a registrant to limit a completeclearance search to marks valid in thecountry of origin in order to limit the riskthat the possible voiding of the domesticregistration or its refusal would lead to thecancellation of the entire internationalregistration. On the other hand, an initialCTM application entails more risks ofencountering obstacles or oppositions from possible owners of prior rights, socreating an undesirable negative effect on a possible international registration basedon the CTM application.

Decisions on how to proceed could alsodepend on the importance of the brandproject, its geographical extension and thecapability of the investment to supportsubstantial prior search costs. Again, if costsare an issue and the trademark is likely to beused immediately, protection should first besought in those countries where trademarkrights are conferred by registration only, ascompared to those where unregisteredtrademarks nevertheless enjoy protection ifthey are currently in use.

How important is it for a company tointegrate its trademark strategy with itsdomain name strategy? What are the keypoints to remember when doing this?

FGL: When considering a trademarkstrategy, it is always important to make surethat there are no conflicting domain names.A good adviser will always recommend asimultaneous domain name search. Once adecision has been made, domain namesshould be registered simultaneously to thetrademark.

JD: I agree. It is very important to considerdomain name strategy when marks arebeing developed. Most companies developwebsites to promote and sell their goodsand services. When marks are initiallysearched during the clearance process,domain name screening searches should bepart of the clearance process. Availability ofa domain name that includes a mark may bean important marketing strategy. If thedomain is already registered to a third party,it is to the advantage of the company toattempt to obtain the domain before themark is publicly revealed and using anintermediary to obtain the domain for theundisclosed principal interested company isan effective way possibly to obtain thedomain at a lower cost.

Andrea KleinTrademark attorney, Società ItalianaBrevetti SpA, Romeandrea.klein@sib.it

Andrea Klein holds a degree in politicalscience from Rome University. He is anItalian and European trademark attorney,as well as a European design attorney, anda member of the Italian Industrial PropertyConsultants Institute. Mr Klein has eightyears’ experience in trademark practice. He manages Italian, Community andinternational trademark applications, deals with trademark clearance, filing andprosecution, and provides advice ontrademark and copyright issues for majormultinational corporations. He is fluent inEnglish and French.

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Roundtable: Building the brand

TS: The company should always try to thinkahead and register its brand as a domainname in all possible future markets. As weall know, the domain registers allow just oneowner for each name when there,theoretically, can be 45 different owners ofthe same trademark because of the systemwith different classes. The customer will trya domain name that is the most similar tothe actual brand as it is used; therefore, thedomain name should be identical to thebrand name if possible.

AK: The Internet has acquired a crucial rolein the launch of a product or service and thedevelopment of a market. The capability touse the trademark as a domain nameshould be a key element of the brand’sprotection plan, independently from theplanned use of the Internet for information,promotion or sales purposes. However, ifthe mark selected has already been used bya third party as a domain name, this usemay afford to the domain name registrant aprior right whenever the use concerns afield of activity connected to that of theproposed brand. In such a case, the brandowner could consider not making its goodsor services available in the territory inwhich the prior domain name was used ifthis would not impair its interests and bedecisive in overcoming possible risks.

How can a company best ensure that thetrademarks it owns are properly used bothinside the organization and externally?What are the dangers of not doing this?

TS: Simply put, there are three key actionsthat support proper management of abrand. The first is education of internal andexternal parties. Then you have monitoringsystems, such as brand audits, approvalprocesses and trademark audits. Finally,there are support tools – for example,guidelines, templates and policies.

Ensuring consistent use of a brand isone of the most important tasks in brandmanagement. As brand manager/brandcounsel you must always monitor actualuse, both internally and externally. As withall other aspects of brand management, it isimportant to monitor brand use fromseveral different perspectives at once, suchas strategic, linguistic, legal and visual.

JD: It is important for companies toestablish style guides for their marks,internally educate personnel and licensees,and police trademarks properly throughwatch services and internet monitoring

services. If a trademark is misused orpresented inconsistently, owners run therisk of chipping away at the brand or, in theworst case, committing genericide, resultingin abandonment of their trademark rights.

FGL: A company that wants to ensure thatits trademarks are used properly shouldprovide a trademark user’s guide and haveall of its competent employees undertake tocomply with this guide. The companyshould not hesitate to refer to thistrademark user’s guide when asking for itsattorneys’ advice. Jody makes a veryimportant point when she says that acompany which has no mechanism in placeto ensure that trademarks are used asregistered is running the risk thatdefendants will argue that the trademark asused is not identical (anymore) to thetrademark as registered and that, as a result,the trademark as registered should besubject to deletion. This means that acompany which intends to modify thedesign of its trademarks as they are used

will have to consider filing new trademarks,once a decision has been made.

AK: I agree that a clear manual outliningstandard uses is the simplest way to ensurethat the trademark is used properly withinthe company. It is important that thoseresponsible are able to investigate possibleimproper uses and have the authority tocorrect any improper behaviour. A similarscheme should be used for associatedparties such as licensees or wholesalers thathave the right to use the mark in givensituations. In these cases, a writtenagreement should be signed, and shouldinclude the rules to be followed and thesanctions for any improper use. Unrelatedparties should not be allowed to use themark, except for information purposes andwith a clear reference to the mark owner.Again, improper uses should be reportedand corrected. For some famous trademarks,it is nearly impossible to act against allimproper uses of the mark, but it isimportant that the larger cases or those thatmay have dilution effects are timely andadequately prosecuted. Failure to act couldweaken the recognition capability of thebrand by consumers or provoke anexponential increase of unlawful uses –potentially leading to its dilution orgenericization.

What options are open to a company if itcomes across a potential infringement ofits trademarks? At what stage should legalaction through the courts be considered?

JD: It depends on the type of infringementinvolved. Consider the wilful infringerversus a negligent or innocent infringer.Normally a cease and desist letter is a firststep with regard to raising objections to apotential infringer. It is very expensive tolitigate in the United States and litigationshould be a last resort after careful analysisof pros and cons, and ultimate costs to acompany to proceed with litigation,understanding the potential costs from thefiling of a civil action to ultimate decision.

FGL: Frankly, a company which comesacross a potential infringement of itstrademarks should not ask for options. Itshould contact its attorneys and seek theiradvice. Should this advice be that thecompany’s trademarks are infringed, thencease and desist claims, as well as damageclaims, should be asserted as soon aspossible. Should the infringer not give in,legal action should be filed, where possible

Friedrich Graf LucknerPartner, CMS Hasche Sigle, Hamburg Friedrich.Luckner@cms-hs.com

Friedrich Graf Luckner is a partner withCMS Hasche Sigle, Germany. At the sametime, he is head of the Intellectual PropertyPractice Group within the internationalCMS Alliance of law firms. He has advisedclients on all aspects of trademark law formore than 25 years. His practice includesboth contentious and non-contentiousmatters, and he represents clients beforethe German courts, the German Patent andTrademark Office, the Federal Patent Court,the Supreme Court and the European Courtof Justice. His work also covers IP law ingeneral, including patent, copyright,design and related laws.

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by immediately applying for an ex parteinterim injunction.

TS: The first thing to do when discoveringan infringement is to send a letter thatclearly points out that the use of the mark isviolating your exclusive right and that theuse must stop immediately. In Sweden, sucha cease and desist letter should always bebalanced. Too aggressive a style of languagecould in some situations be a breach ofmarketing law.

As Jody says, legal action through thecourts should be the final option, as thiscould lead to substantial costs and negativepress coverage. On the other hand, in somecases legal action is the only way to stopsomeone from using your trademark. It isimportant to consider also how affected byinfringements your trademark is. In caseswhere infringements are common andintentional, legal actions are more advisable.In the case of a single, unintentionalinfringement, the possibility of reaching anagreement with the other party shouldalways be investigated first.

Vigilant monitoring of potentialinfringements and safeguarding of the legal rights of the trademark are extremelyimportant and should always be a highpriority.

AK: A cease and desist letter should be thefirst step taken by the mark owner. Howeffective such letters are depends on manyfactors. One is that the letter should be sentthrough a local trademark lawyer who isknown for his or her inflexibility and his orher capacity to bring actions that cause themaximum harm to the infringer. From acost perspective, the best option is to pressfor an out-of-court settlement. If, however,this appears impossible and there is a riskthat the infringement will continue, courtproceedings should be considered.

Which issues need to be considered whendeciding whether to maintain trademarksthat are not currently in use?

AK: Obviously, there is no benefit inabandoning trademarks before the date onwhich there is an action or costs areinvolved for their maintenance, whichmostly happens at the renewal stage. At thatstage, the decision should be made afterconsidering both legal and commercialissues. Where, for example, renewal isconditional on effective use and, as in theUnited States, to a declaration of use, themark should be abandoned or should be

restricted to used products and services.Otherwise – as, for example, under EUlegislation – renewal can still be made ifthere is interest in maintaining a trademarkfor future use or if the mark is similar to asign that is in use.

Ideally, companies continuouslydeveloping new goods would be happy tohave a ‘ bank’ of trademarks for which theyhave already obtained registration andwhich could be selected when a new productis created – in most countries, late use orresumption of use of a previously unusedtrademark prevents the cancellation of therelevant registration. However, this is notalways possible; and in any case a careful,fresh analysis of the availability of atrademark from all points of view and in all jurisdictions, including an investigationon the domain name side, should be madeat that time.

If the trademark is still of interest,although not in use, there might also be thepossibility of a new filing – if necessary witha different layout of the trademark and/orwith a different specification of goodsand/or services – whose validity is, however,

to be preliminarily ascertained in eachjurisdiction concerned.

JD: As Andrea says, if a mark has not been inuse in the United States for three years ormore, there is potentially an abandonmentof the rights in the mark and if there is acontinuing interest in obtaining fresh rightsin the mark, an intent-to-use applicationshould be filed with the USPTO. Once anapplication is filed in the United States, it isapproximately three to five months toexamination and another three to sixmonths to publication for opposition. Oncean intent-to-use application publishes and anotice of allowance issues, the applicant has36 months to establish use of the mark.Considering the long timeframe, there iscertainly sufficient time for a company todecide whether it wishes to proceed withdeveloping the mark for use in commerce.

TS: The main rule is to register onlytrademarks that you use and to use onlytrademarks that are registered. For defensivereasons, however, it is sometimes necessaryto keep a registration for a period of timeafter the actual use has stopped. Otherfactors that could motivate keeping aregistration that is currently not in useinclude where the trademark has a potentialmarket value for third parties or where itcould be considered for future use.

In Europe a registration can be revokedif it is not used for five years. This timeperspective should therefore be consideredin the long-term planning for such atrademark registration.

FGL: When deciding whether to maintaintrademarks which are not currently in use, a company should consider the likelihood ofreturning to use of the trademark. Wheresuch likelihood is substantial, the trademarkshould be maintained. Where it is certain thatthe trademark will no longer be used, there isno reason to maintain it. The trademarkwould then simply be allowed to expire asopposed to being extended. The competentindividuals should, however, be aware thatquite often there are situations wheretrademarks that have been used at an earlierstage are reactivated. This is, for instance,presently the case in the automotiveindustry. Think of Fiat, for example,reactivating its trademark ABARTH; Renaultreactivating its recent trademark ALPINE; andVolkswagen creating a GOLF GTI PIRELLI. Also,think of the trademark BUGATTI, which wasreactivated by Volkswagen and the trademarkTRIUMPH for cars, presently being discussedas a reactivation project for BMW. WTR

Thomas SjöbergPartner and managing director, EssenInternational AB, Stockholmthomas.sjoberg@essen.se

Thomas Sjöberg has been a partner andmanaging director of Essen InternationalAB since 1995. In his capacity as seniorconsultant, Mr Sjöberg is responsible for alarge number of international clients suchas Pfizer, Johnson & Johnson, Swedbank,V&S Group and Vattenfall.

Essen is the leading brand consultancyin the Nordic region. It consists ofconsultants and designers working inintegrated brand development processesfor international clients.