Hi Georg,
Ae requested, I have asked our Patent Attorneys, Phillips and Leigh (P&L), for details of taking out trademarks outside Europe
There are 2 paths we can follow:
1) Madrid Protocol (WIPO) We could apply for a community trademark within selected countries which are signatories to the Madrid Protocol (including US and Japan).
The cost is relatively low but the downside is that if a refusal is raised in any one country within 5 years, then all is lost. Then, one has to go back to national registrations and start all over again. The official fees are £1,100 plus Philips and Leigh costs, say a budget of £2,000.
2) Selected national registrations
So far, We have had responses from US and Japan.
The recommend approach is to go for a preliminary search: A quick search costs $ 3-400 A complete search would cost $1,300- 1,600 both plus P&L fees which would say double the cost approximately.
If we go for full registration, the official fees would cost $2,400. The overall cost for either USA or Japan, without too many complications, would be $10,000 plus P&L = say $20,000 per country
P&L feels that the design is likely to get through but senses that there may be some objections on the regulations in the USA.
They have done a quick search of the USPO website and found a number of similar trademarks including a Certified Open which died in 1996.
A possible suggestion:
1) Do a thorough search in US and possibly Japan as it is there that the most likely contests will be raised; 2) If ok, go for the Madrid Protocol.
I can send you more background material when you are ready.
Best regards
Basil Cousins 44 208 661 1873 44 771 736 2525
[ bounced initial mail over to board@ and putting board@ in CC to make sure we archive this information in the right place ]
On Wed, 1 Aug 2007 08:46:10 +0100 "WILLIAM COUSINS" basil.cousins@openforumeurope.org wrote:
wc> Ae requested, I have asked our Patent Attorneys, Phillips and Leigh wc> (P&L), for details of taking out trademarks outside Europe
wc> A possible suggestion:
wc> 1) Do a thorough search in US and possibly Japan as it is there wc> that the most likely contests will be raised; 2) If ok, go for the wc> Madrid Protocol.
Thanks a lot for the update.
The proposed path seems to make sense.
I wonder whether there is anything in particular I should have a look at, or any action item you see in my field as a result of this.
Regards, Georg
Georg,
Thanks; I will ask P&L for a definitive quotation. We will need to work out how to finance this.
Basil
-----Original Message----- From: Georg C. F. Greve [mailto:greve@gnuhh.org]On Behalf Of Georg C. F. Greve Sent: 01 August 2007 09:53 To: WILLIAM COUSINS Cc: Bob Blatchford; Graham Taylor OFE; board@certifiedopen.com Subject: Re: Certified Open Trademarks
[ bounced initial mail over to board@ and putting board@ in CC to make sure we archive this information in the right place ]
On Wed, 1 Aug 2007 08:46:10 +0100 "WILLIAM COUSINS" basil.cousins@openforumeurope.org wrote:
wc> Ae requested, I have asked our Patent Attorneys, Phillips and Leigh wc> (P&L), for details of taking out trademarks outside Europe
wc> A possible suggestion:
wc> 1) Do a thorough search in US and possibly Japan as it is there wc> that the most likely contests will be raised; 2) If ok, go for the wc> Madrid Protocol.
Thanks a lot for the update.
The proposed path seems to make sense.
I wonder whether there is anything in particular I should have a look at, or any action item you see in my field as a result of this.
Regards, Georg
-- Georg C. F. Greve greve@fsfeurope.org Free Software Foundation Europe (http://fsfeurope.org) Join the Fellowship and protect your freedom! (http://www.fsfe.org) What everyone should know about DRM (http://DRM.info)