1 August 2018

Since founding Win Win Parenting in 2013, Dr Rosina McAlpine’s education programs have been helping working parents across Australia balance work-life priorities. 

“When parents struggle at home to manage parenting challenges and meet the many demands of family life, it can have a negative spill over at work. Win Win Parenting workplace education programs provide working parents with practical tools so they can be confident and effective at home, and come to work ready to be focussed and productive – that’s the win-win,” says Rosina.

Taking Win Win Parenting international

After establishing a strong business at home in Australia, working with clients such as Lendlease, Macquarie bank and Deakin University, Rosina set her sights on expanding Win Win Parenting into international markets.

“We have two business models, we sell business to consumer and we sell business to business. It was really important for us to get IP protection in the English-speaking countries so that we could sell internationally,” says Rosina.

With that in mind, Rosina along with Colin – her husband and Win Win Parenting co-founder began the process of filing for trade mark protection in the United States of America, the United Kingdom and New Zealand.

The application process

“We started the process of applying for IP protection with an attorney in Australia. However, this was very expensive – being a start-up at the time when we were first filing made it prohibitive,” says Rosina.  “But we still had to protect our IP. It was by asking lots of questions and just by trial and error that we were able to do it by ourselves.”

Rosina and Colin decided to apply using the Madrid Protocol; a treaty that allows you to extend the protection of your trade mark registration internationally, meaning Win Win Parenting could apply for all three selected countries at once rather than go through their individual IP offices.

The process wasn’t without its challenges for Win Win Parenting. “In Australia, for our first trade mark we ticked every goods and services category that looked like it was relevant. However, what we didn’t realise was that we had to go with those same many categories using the Madrid protocol and it’s a lot more expensive than in Australia so it cost a fortune,” says Rosina.

“I’m not suggesting you delete or not use categories that are important to your trade mark – but be selective, we ticked anything that looked even remotely like we might use it in the future, and this can be a costly mistake” says Rosina.  

Not only was this costly, but when it came to their US application, they were required to narrow the scope of their goods and services to meet US requirements. “In Australia the categories are very broad. For example, in Australia category 9 is ‘downloadable webcasts, webinars, podcasts and video recordings.’ For the US we had to specify the content by adding words to the effect of ‘featuring information on communication skills, parenting, families, work-family interface, and child development and life-skills education’ to meet the requirements for the USPTO.”

Throughout the application process, Rosina and Colin recall receiving a number of official letters that initially shocked them. Their advice?  “Don’t be scared by the language – words like ‘total provisional refusal’ sounds like you’re out: game, set and match, but that is not the case. Be forewarned that you will probably get a refusal, and know that often all you’re going to have to do is to ask for guidance and then provide a response with more detail.”

Tips for other businesses

If, like Win Win Parenting, you think you’re ready to take your business global, it’s important to do your research beforehand.

“Have a strategy,” says Rosina. “In our case, we had three aspects of our business we needed to protect, and we started with our company name and logo. Look at all the things you need to protect, and then prioritise them in order of importance considering the funds you have to take them forward. Australia is relatively inexpensive when compared to international offices. Have a plan and then go step-by-step. If you come to a road block or a refusal – ask for help from the IP office and then respond. That’s how we have achieved our success.”

For Win Win Parenting, the process of going global is still ongoing. “I feel like we’ve overcome so many rejections, so many ‘needs to respond’ that now, no matter what they say we can overcome it. We now have a number of our trade marks successfully through the entire process from beginning to end, and that process has taken just over a year. It’s not over yet, I think we still have at least another year to go. Persist and you’ll succeed in the end,” says Rosina.

Protecting your trade mark in the US

If you're an Australian business looking to launch into the US, find out more about the US trade mark system including the registration process, costs, selecting your goods and services, what examiners look for in your application, official letters and how to respond and where to get help.

Watch our chat with Rosina

You can also view the full transcript for this video.

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