Registering China Trademarks: The Questions We Ask

I was recently cc’ed on an email from one our China trademark lawyers to a new client. The email is an introductory email to a company that had just retained us for China trademark work. The email asks the basic questions to which we need answers so we can efficiently and effectively figure out what this company needs by way of China trademarks to protect itself from China.

Here is that email:

Good to meet you. I will be working on your China trademark matters. I know you have already discussed some initial matters with us, but I like to start at the beginning to be sure everyone is on the same page. To that end, would you please answer the following questions:

1. Please provide the full name and contact information for the entity that will own the China trademark.

2. Does the above entity have a Chinese name? If so, please provide it. If not, we will provide one for you. (The Chinese Trademark Office requires that every applicant filing a national trademark application use a Chinese name.)

3. Do you have any trademark registrations or pending applications anywhere in the world? If so, please list them.

4. Please describe, briefly, what you will be doing in China. Will you be manufacturing? Selling products or services? Something else

5. Please list any trademarks that you will be using in China, distinguishing between words and graphic logos. Please also distinguish between the trademarks that you would like to file an application for now, and those that you would like to hold off on.

6. To the extent that you are using graphic logos as trademarks, please attach a copy of those trademarks, in both color and grayscale, in either jpeg or pdf format.

7. Please describe briefly the products or services with which the marks are associated. Please note that for products, the material used is relevant: for instance, a product made of metal may be treated differently than one made of PVC or vinyl.

8. How will you be using the trademarks? To the extent that you will be manufacturing or selling products, please describe how the trademarks will be affixed to those products and/or their packaging. If you have photos of the trademarks as used on goods and/or packaging, that would be helpful.

After I hear from you on the above, I can then prepare a more narrowly focused set of questions.

I look forward to working with you on this matter. Don’t hesitate to contact me should you have any questions.

We ask so many questions because it is important our client get the right trademark or trademarks — and no more — in the right classes. We are often brought on by companies that are having China trademark problems and when we look at all that they have done with China trademarks we discover they both paid for trademarks they did not need while at the same time, failed to secure some trademarks they did need. When we talk to them about this, we usually learn that this happened because their trademark lawyer either did not ask them enough questions to get to the bottom of what they really needed, or simply did not fully understand China trademark laws. We ask so many questions so that nobody ever writes this about us.

For more on China trademark law, check out China Trademark Basics and China Trademark Law: Simple and Effective.