By Craig Neugeboren and Emily Bryson


Internationalizing your brand or business in general is exactly what it sounds like — going global. Today’s market almost insists on internationalizing your exciting product or brand. But many businesses don’t want to put the money forward to do it, or they are forced into critical decisions that are irrevocable.  

There are two sides to this that we will look at here. There is a side that involves protecting intellectual property. That is our job at Neugeboren O’Dowd and involves working with a client on the decision-making process for trademarks and patents. 

And there is the side that looks at the business side of things, from marketing to human resources, and more. This is Emily Bryson’s specialty. A lot goes into making sure a brand will succeed overseas. She works for CCW Business Solutions (Crowe UK) and educates companies that are looking to expand their business footprint beyond the United States. She offers an excellent business sense of the process and advises companies on areas where there are both tips and traps in the corporate expansion dynamic.

Craig Neugeboren on Internationalizing Trademarks

Our process here is a lot different than Emily’s. We come from the position of protecting intellectual property. It’s a little more self-defined due to strict legal deadlines and timelines. It’s a very exacting process and methodology when it comes to protecting United States intellectual property overseas in the most cost-effective way possible.  More often than not, our deadlines and due dates are set in stone, especially on the patent side of things.

That process timeline is often the most important part of the internationalization of patents and trademarks because not adhering to those deadlines could mean the client is no longer allowed to apply again. Our job here is to provide a very clear roadmap in terms of both substance and administration of that process.

In the trademark world, you have roughly six months after an initial filing date to act. In the patent world, it’s twelve months after the filing date. 

The Patent Side

Here, it’s good and it’s bad because having a strict timeline sometimes makes the decision making easier for the client. But on the other hand, at least on the patent side of things, the deadlines are often fatal if you miss them. If a client wants to protect their intellectual property overseas, they have to make the decision a year after their United States (or first application) case is filed. If they don’t, they’ve permanently lost the opportunity to internationalize that property.

The other downside is in costs. From our perspective, the costs are immediate. This makes the decision making even more uneasy. First, you have the deadline to worry about, then you have the upfront costs associated with it. If after the year you decide you aren’t going to pursue international patent protection, you’re forever banned from trying to do so on that project. It’s a very expensive decision for the client either way.

The Trademark Side

The trademark side is a little more flexible and forgivable. You still have deadlines and a timeline you have to do things by in order to retain your priority in the U.S. application filings, but it’s not fatal if you wait until after that priority deadline to take your cases overseas.

Later, you can still go on and file for international trademark protection if you change your mind.

For that leeway, it does get a little more expensive if you wait.

If a client isn’t sure if they are going to internationalize their trademarks, I would say, just pass for now, or file something very basic, like a Madrid Protocol application that designates one of the less expensive countries.

If the product does well in a year from now, we might revisit the conversation.

Taking Intellectual Property Global

We know how difficult these decisions are. So we may hedge a little bit for our client and do some of the bare minimum filings to give them a chance to kick the can of foreign applications down the road.

When it’s a smaller company, the legal strategy is different. If they don’t have an acquisition plan or are working on liquidation deals, we want them to be able to preserve their internationalization rights.

That’s something we do a lot of, and we’ll work alongside an attorney in the country in question to get their help. They will even look at it before we file to ensure it’s compliant with local regulations.

That’s something that a lot of attorneys in the United States just don’t do. 

We encourage upfront conversations about going global, and it’s our job to give companies the foresight they need to make the decisions they want to make, as comfortably as possible.

Smaller companies have just as many rights to internationalize as the big ones. But if they are just starting, and we’re asking them about their commercialization strategy for Japan, they are going to throw up their hands and feel overwhelmed.

In the end, though, a client is not going to focus on international intellectual property protection at all if the commercialization path isn’t clear. We work the legal end of things, and folks like Emily Bryson work the market side of things.

Emily Bryson on Testing the Market

As Craig said, the commercialization path with a foreign application is entirely up to the company. What I do is work with companies to educate them on the options that are available to expand their brand internationally. Today, it’s easier than ever to test the market, and there are a number of ways that they can do so.

The first thing a company needs to do is understand the market they are expanding their business into. Every country is different.

What might happen with their product in China may not happen with their product in the U.K. or Brazil. Often executives are under the impression that every country operates just like the United States, and that’s just not the case.  

Related: Update on China’s Amended Trade Laws

The perfect time to have an initial conversation is before a specific country/market is identified. However often this process can be more of a fire drill with an immediate need to enter as soon as possible.  

How do you enter? What type of corporate structure do you need to have in place? Do you even need a corporate structure to test the market? The good news is that there are several ways you can do this! And in some instances very cost-effectively!

Companies need to understand their risk; regulatory and legal compliance. Expanding smoothly into another country without violating any laws or rules needs to be top of mind. It is also very important to understand language and cultural differences, this can define the difference between a successful business and an unsuccessful business.

Globalization Timelines

Establishing globalization timelines helps the client tremendously. Establishing a 6, 12, and/or 18-month plan is a great place to begin helping the client feel better about their commercialization path.

They want to do it though. The biggest downside from my end of internationalizing the brand is similar to Craig’s. Companies should always assess their capital prior to entering any new markets.

Read more: Market Intelligence and Brand Management

Staying Competitive in a Global Market

A key part of business is staying competitive, and it’s at the top of the list of things we both talk about with our clients. We help them understand what their competition is doing, and what other companies in their vertical are doing. We do this even at the early stages.

We both want to help them make the highest dollar sense of return for what they are doing. When they know what their peers have successfully done, they can take their brand and intellectual property up a notch.

We both also offer them insight into the tax advantages of internationalization as well. 

There’s a lot that goes into internationalizing a brand. Emily and Craig come from two different sides of the issue, while also complementing each other very well. Let us know if it’s a good time for your company to go global. We want you to succeed.