From Kimono, through #KimOhNo, to Skims: A branding nightmare for Kim Kardashian
#KimOhNo became a symbol of the backlash to Kim Kardashian’s attempt to register a trademark for her new line of shape wear, Kimono.
Just like you might not need to register your trademark everywhere around the world, you might not need to perform trademark watching globally either (except on places like social media, which you'd monitor as a whole). Remember, monitoring is only part of protecting your brand; you also need to be able to enforce your rights.
When deciding which countries to include, think about where you do business and have built up a good customer reputation. Then, think about whether you can challenge new trademark applications in those countries. For example, in the US, you might be able to oppose newer marks if you've been in the market longer, even if you don't have a US trademark. But in many countries, you'd need a registered trademark to raise an opposition.
So, the countries you'll monitor will likely be the same as the ones where you have trademarks, but not necessarily.
Another thing to keep in mind is the dual system of protection in the EU. If you have a trademark in Germany, for instance, you'll want to watch both the German IP office and the EUIPO since both German and EU trademarks could infringe upon yours.
However, even after all these considerations, we should make a point related to the budget. If you're thinking about subscribing to a trademark monitoring service and are choosing from your provider's packages, be sure to look at whether global coverage isn't cheaper than getting separate packages for each country.
Does the cost of trademark registration depend on the number of classes?
If I file my trademark on an intent-to-use basis, can I provide the specimen later?
What should I submit as a specimen if I provide e-commerce services instead of producing goods?
How can I overcome the "likelihood of confusion" refusal from the USPTO?
What happens if my trademark is dismissed due to geographical descriptiveness?
Can you add classes to an existing trademark at a later date, or will it need to be filed again?
Can I amend the goods and services listed in my application in response to an office action?
Can my competition challenge my trademark after it is successfully registered?
If I need to limit classes or item on my trademark application, do I have to submit a new one?
Are there any costs if a trademark dispute resolution is reached amicably?
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