Quote from Martin Schweiger on May 30, 2021, 1:45 pm

aaahh, excellent question.

From a trademark point of view, it is always bad to select a trademark that can either not be registered or that comes with a limited scope of protection. That often goes back to marketing people that do not have legal trademark experience. You need to have an experienced trademark person in your marketing team, probably a patent attorney because these people are trained in trademark practice and they do almost nothing else during their professional life.

A second weak point is about not doing a proper search for earlier rights. I have seen this often: a brand must be changed a later point in time because the brand owner has stepped on someone else`s toes. That can be very expensive. Do Google searches and searches in the trademark registers in order to prevent that. And file trademarks with a narrow specification that is limited to what you are actually doing, especially when you establish a new brand. That prevents pointless legal skirmishes with other trademark owners because of the abstract overlap of the scope of protection of two trademarks, for the sake of "future potential of expansion in your range of business". Again, you need to have an experienced trademark person in your marketing team, probably a patent attorney because these people are trained in trademark practice and they do almost nothing else during their professional life.

A third important point is often overlooked, too. Especially for brands that are used in the Internet (today, every brand is used on the Internet), check whether the trademark means something different elsewhere. Some examples that come to my mind are :

• Braniff International translated a slogan touting its finely upholstered seats "Fly in Leather" into Spanish as "en cuero" which means "fly naked"
• Clairol launched a curling iron called "Mist Stick" in Germany. "Mist" in German means "manure", so its product becomes a "manure stick"
• Coca-Cola's brand name, when first marketed in China, could be translated as "Bite The Wax Tadpole". And Chinese love to make jokes with language
• Colgate launched toothpaste in France named "Cue". That is also the name of a French pornographic magazine
• Beer-maker Coors translated its slogan, "Turn It Loose," into Spanish, where it is a term for having diarrhea
• Electrolux marketed its vacuum cleaners in the U.S. with the tag line: "Nothing sucks like an Electrolux."
• Ford marketed their Pinto car in Brazil. "Pinto" means "chick" in Portuguese but in Brazil it stands for "(tiny) male genitals"
• Perdue Farms, a large chicken-producing company in the US, translated its tag line, "It takes a tough man to make a tender chicken," into Spanish as "It takes a sexually stimulated man to make a chicken affectionate"
• Gerber marketed baby food in Africa with a cute baby on the label without knowing that, in Ethiopia, products usually have pictures on the label of what's inside since many consumers can't read
• Ikea products were marketed in Thailand with Swedish names that in the Thai language mean "sex"
• KFC translated its tag line "finger licking good" as "eat your fingers off" in Chinese
• Mercedes-Benz translated their brand name as "Bensi" into Chinese, which sounds like "rush to die"
• Nike tried to use a word-device mark with a fiery flame element in Arabic countries but could not do so because it resembled the Arabic word for "God"
• Panasonic tried to promote a Web-ready PC with a Woody Woodpecker theme in the US, using the slogan "Touch Woody: The Internet Pecker". Explanation: "Woody Woodpecker" is a popular comic character, and "pecker" is understood for "male genitals"
• Parker Pen translated "It won't leak in your pocket and embarrass you" into Spanish by "It won't leak in your pocket and make you pregnant"
• Paxam, an Iranian consumer goods company, markets laundry soap using the Farsi word for "snow," resulting in a trademark with the meaning "Barf Soap"
• Pepsi's slogan "Pepsi Brings You Back to Life" was translated into Chines with the meaning of "Pepsi Brings You Back from the Grave"
• Puffs marketed its tissues under the brand name "puff" in Germany. "Puff" in German is slang for a brothel
• The American Dairy Association translated its "Got Milk?" campaign in Spanish with the meaning of  "Are You Lactating?"
• Vicks tried to use its brand for cough drops in the German market. The German pronunciation of "v" is "f" making "Vicks" sound like slang for "having sexual intercourse"
• The acronym "Pro" comes with two meanings, one is "professional" and the other one is "prostitute"
• The Chevy brand "Nova" means "Won't Go" in Spanish
• The Mitsubishi "Pajero" brand means "jerk" in Spanish

and there are many more.

All that is another reason to use a national representative - and to NOT use the IR system - when you file a new trademark in a foreign country.  A national representative will tell you before filing if he can anticipate a problem with the new trademark in his own country.