This is the third of my posts on the United State’s Patent and Trademark Office’s recently completed two-day conference on “Protecting Your Intellectual Property In China and The Global Marketplace“ The first,”Nike On China IP Protection: Just Do It With Green Tea,” was based on a speech by Kevin R. Brown, Nike’s Director of Global Brand Protection. The second, “China: Counterfeiting And Piracy — The Issue And The Challenge,” recounted Timothy Trainer’s speech on preventing piracy. This post focuses on the speech given by Kim Teraberry, Director and Corporate Counsel at Starbucks.
Full disclosure: I am a huge fan of Starbucks and have been a shareholder for so long I am not even sure since when.
Ms. Terrabary’s speech focused on the efforts Starbucks has undertaken in China to protect its IP. Starbucks has a total of 253 pending trademark applications and registrations in China. In 2002, it had 8 trademark disputes. In 2006 it has already had 85. Almost all of these disputes involve oppositions to rival trademarks, not lawsuits.
Ms. Teraberry wisely advised businesses in China to file their trademarks “early.” She suggested companies look first to filing their core/house marks and then the marks needed to conduct their business. She also suggested businesses consider filing Chinese character versions of their core marks. She talked about the slew of defensive filings Starbucks has made in China, including the following:
- Variations of word marks (roman alphabet)
- Variations of Chinese character marks
- Variations of design marks
- Expanded/additional classes
- Nicknames
She went on to say that if you do not choose a Chinese mark, someone else will choose it and she made clear that it is not wise to assume that your Roman script mark will protect you against a Chinese character version. She talked about how companies should consider registering both a translation of their foreign name and a transliteration (same sound, different or no meaning). She used Tai Shu (meaning “calm” or “relax”) as an example of a transliteration for Starbucks brand name, TAZO.
According to Ms. Teraberry, in choosing a Chinese trademark, one should consider the following:
- Marketing Objectives
- Connotation
- Appearance
- Sound
- Multiple Dialects
- Traditional and simplified characters
- Trademark Clearance
I concur with Ms. Teraberry’s advice, but would add that if a foreign company expects to do right by its trademarks in China, it must retain professionals fluent in both Chinese and English with familiarity with both cultures. Anyone can look up a word and translate it, but as Ms. Teraberry makes clear, that is not likely to be enough to protect your trade-names and trademarks in China.
I am often asked by small companies if it is worth it to do all that is necessary to protect their name and brands in China. My response is that if their brand, product name(s) and/or logos are valuable to them they really have no choice but to do what it takes to protect them. If you are doing business in China or with China, you have no real choice but to register your trademarks in China.
