by Dan Harris
A China trademark lawyer friend of mine sent me a Wall Street Journal article the other day, entitled, When It Helps to Have a Lawyer. The email containing the article link read as follows:
Did you see this article? I’m betting that you didn’t because if you had, you would have done something with it. I think what it says about trademarks is even more the case with China than with the United States. Reminds me of when we talked about all the attempted trademark registration f—ups we have seen by American lawyers with no knowledge of China trademarks. Anyway, this empirically backs up what we discussed because if these are the percentages in the United States, the numbers have to be higher for China if we include American lawyers who do not know what they are doing here. You agree right?
I so much agree, that I’m writing this post.
According to the article:
Trademark applicants represented by attorneys are 50% more likely to earn a stamp of approval from the U.S. patent office than those who go at it alone, according to a new academic study.”
The paper’s authors crunched 25 years’ worth of data released by the U.S. Patent and Trademark Office last year to gauge the importance of having legal counsel.
The study … found that on average, 42% of trademark applications filed by attorney-less applicants ultimately were registered. Those who retained an attorney had a success rate of 60%.
Until a few years ago, my law firm did China trademark work, but no U.S. trademark work, simply because we did not believe that any of our lawyers had sufficient U.S. trademark experience. Many clients were surprised when we would refer them to trademark counsel at other firms, and they would often ask how it could be that we knew China trademark laws but not U.S. trademark laws. My answer was that it was because a couple of our China lawyers make it a point to stay current on China trademark laws and because we file hundreds of China trademark applications every year. Now that we actually have a very experienced U.S. (and international) trademark lawyer, we do file U.S. trademark applications, as well as doing other U.S. trademark work, but I have become even more convinced that we were right not to take on such work previously.
I am not aware of any comparable study of China trademark applications, but I am absolutely certain the numbers have to be at least as high. I say this knowing how complicated it can be to register a trademark in China, and how often I have had to explain to distraught companies why what they (or their lawyer) did while trying to register a trademark in China was a big mistake.
I recently received multiple emails from China consultants who are writing me on behalf of their American company clients that are having problems with their China trademark filings. An amalgamation of these emails went something like this:
This American company used an American law firm to try to register the following as a trademark in China:Toy Value [Note that I made up this name and changed the industry so as not to risk identifying anyone]
They have just learned that the China Trademark Office (CTMO) has rejected this mark as “too descriptive.” They were then told by their counsel that they should try to register the mark again, but this time for a service, not a product.
I am thinking that you may have a better chance of getting the mark registered in China.
Can you help?
My responses were something along the following lines:
We can help, but I certainly wish that you had come to us sooner as we would have instantly told your client that its trademark application would likely encounter problems with the CTMO.
Your client should have obtained pre-application counseling regarding its trademark and for the goods for which it was seeking to register the mark in China before it sought to file anything Had they done so, they would have learned that this trademark would likely face problems, and rather than waste time and money filing the application in the way they did, they could have considered alternative filing strategies for the same mark, or considered alternative marks.
Having filed their trademark application in the way that they did, the application was not only rejected, but the failed application might have created a record with the CTMO that could have negative implication for any future application they might file for the same or a similar mark. Pre-application advice almost certainly would have avoided all of this. Right now they are completely lost. We can help, but to do so, we will require that your client essentially start over from the top.
Bottom Line: Securing a U.S. trademark registration is more complicated than most people realize and that is even truer of China trademark registrations. You really should use the right China lawyer for China trademarks.