1.Basic Trademark Strategy

Building a brand starts with deciding which trademarks to file. The basic decisions are: (1) which trademark will serve as the “anchor” or foundation of the brand? (2) what types of products should the trademark cover (trademark “scope” or “product class” decisions)? and (3) in which countries should the basic trademarks be filed?

In Chapter Ⅲ, on Cost-Benefit analysis, we discussed topic (3). The main issue was the desire for a single, global brand, which could be a problem if conflicting trademarks are found to be already in use or one or more countries where you want to operate. We discussed how to analyze the “tradeoff” between global uniformity and the possibility of using a different brand in a country where the desired single brand is already in use by someone else. This “localization” strategy might be better than using a single global brand which can be used in all countries, but which is not as good as the preferred brand. A brand for use in a few “second best” countries might be better than a global brand that is less effective in all countries.

Two other issues may arise in global trademark strategy:

●A word or logo may have an offensive, vulgar, or confusing meaning when translated into the language of a particular country. This is a special case where use of a trademark different from the global brand trademark might be necessary.

●In some national trademark offices, more variations of a trademark might have to be filed to protect against bad faith registrants who may try to force you to pay them for a trademark that is close enough to your main brand to cause you problems.

Examples of the first problem are common, and are one reason it is important to check a trademark or slogan carefully before registering it in a new country. Kentucky Fried Chicken has long used an English language slogan in the U.S.: “It’s finger-lickin’ good.” This means people like the chicken so much they eat it quickly with their hands then lick the last bits from their fingers to enjoy the good taste. But it was originally translated in Chinese as “Eat your fingers off,” which obviously sends a very different message. Another example comes from Pepsi, the soft drink company. At one time Pepsi had an English slogan that said “It brings you back to life”, meaning, the drink will stimulate you and give you energy. But it was translated into Chinese as: “It brings you back from the dead.” Again, a very different message.