A Business Trademark is a recognizable sign, design or expression which identifies products or services of a particular source from those of others. The trademark owner can be an individual, business organization, or any legal entity. A trademark may be located on a package, a label, a voucher or on the product itself. For the sake of corporate identity trademarks are also being displayed on company buildings.
The law considers a trademark to be a form of property. Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark with the trademarks office (or "trademarks registry") of a particular jurisdiction. In some jurisdictions, trademark rights can be established through either or both means. Certain jurisdictions generally do not recognize trademarks rights arising through use. If trademark owners do not hold registrations for their marks in such jurisdictions, the extent to which they will be able to enforce their rights through trademark infringement proceedings will therefore be limited. In cases of dispute, this disparity of rights is often referred to as "first to file" as opposed to "first to use." Other countries such as Germany offer a limited amount of common law rights for unregistered marks where to gain protection, the goods or services must occupy a highly significant position in the marketplace — where this could be 40% or more market share for sales in the particular class of goods or services.
There are numerous benefits to registering a trademark and utilizing the trademark services of a lawyer. Registering a trademark heightens the protection it receives, deters others from using your trademark, and increases the remedies should someone infringe upon the trademark.
Registering a trademark provides greater protection
- Registering a trademark protects a company's name or logo, which is often a company's most valuable asset;
- Registering a trademark grants the trademark owner receives exclusive nationwide ownership of the mark;
- Registering a trademark decreases the likelihood of another party claiming that your trademark infringes upon their trademark;
- Registering a trademark provides official notice to others that a trademark is already taken; consequently, a company that later adopts a confusingly similar trademark can not claim ignorance of the mark;
- Through registering a trademark the trademark owner obtains the future right to make the mark "incontestable," which provides conclusive evidence regarding the validity of the mark and of the registrant's exclusive right to use the mark; and
- Registering a trademark in the United States can be used as a basis for obtaining registration in foreign countries.
Registering a trademark deters others from using your trademark
- By registering a trademark the trademark owner obtains the right to put a ", after the mark, alerting others to your registration and preventing the defense of innocent infringement;
- By registering a trademark the trademark will appear in trademark search reports ordered by others, likely discouraging others from proceeding with the registration of the same or similar mark; and
- Through registering a trademark the United States Patent and Trademark Office will refuse registration to any trademarks it deems confusingly similar to the trademark.
Registering a trademark provides the trademark owner with greater remedies
- Registering a trademark grants the trademark owner the right to recover up to triple damages and fees of their trademark lawyer from an infringer;
- By registering a trademark the trademark owner receives the presumption of being the valid owner of the mark;
- Registering a trademark increases the likelihood of the successful filing of a dispute resolution policy for an infringing Internet domain name; and
- Registering a trademark gives the trademark owner an automatic right to sue in federal court.
Trademarks (or servicemarks) allow people to identify the source of goods or services, not the products or services themselves. When people see your trademark, they will know where the product came from or who is providing the service. Trademarks can be names, symbols, packaging, the shape of a product, the colors of a product, the sounds, or scents associated with the product, or any combination of these. If a customer can identify the source of a product or service based on the trademark, then you have developed “secondary meaning” and have a strong trademark. To promote, protect, and keep your business from being confused with another, you should consider establishing a trademark for your business. Once you obtain a trademark, you should vigorously defend it. Then, no one in your line of business can use your trademark.
Rights to use a trademark come from using the mark in commerce with the product or service. You may use the TM symbol immediately with your trademark, but you may only use the ® symbol after federally registering the trademark.
On the federal level, you apply for trademark registration with the United States Patent and Trademark Office (“PTO”). If your trademark meets certain requirements, your trademark is registered either on the Principal Register or the Supplemental Register. Marks may be registered on the Principal Register if they are shown to distinguish the applicant’s goods and services. Marks may be registered on the Supplemental Register if they pass the more moderate test of being “capable of distinguishing applicant’s goods or services.”
The Importance of Having a Trademark Attorney
The most essential asset that your business can own is your trademark, a vital asset that will distinguish your business from other competitors and stand out in the market. Make sure that you have a good one because having a not-so-good trademark can blunt all your marketing efforts and entangle your business in legal disputes.
If you do not have a registered trademark, fill out an application form now and file it online. While you're in the interim, you can use SM or TM to let other people and businesses know that you intend to use such mark once your application is approved.
From the very start, you need an attorney. They can help you decide the business entity that you want to enter, and guide you through the process of starting it. All legal matters and requirements like permits and licenses are handled by your attorney, so you can be confident that you're doing a legal business. One of the most important reasons of having an attorney is that you will need his or her expertise when you file for a trademark registration.
According to the trademark law, the key is to be first in the use of such mark. Imagine conducting a business for quite some time without a registered trademark. And then one day, a bigger company moves into your local area which used the same mark or name in the interstate commerce ahead of you. If this is the scenario, you will be compelled to change your signage and your goodwill will be disrupted together with your brand name. Your credibility will be in question and your customers will be confused. And this is all because of not having a registered trademark.
It is not hard to get a registered trademark, especially if you have a trademark attorney to take care of the various responsibilities including:
- advising on selection and adoption of new and original trademarks
- filing applications for a registered trademark
- prosecuting applications
- advising on trademark registrations and its use
- handling trademark revocations, oppositions, assignments, and invalidations
- advising on matters of trademark infringement
Trademarks fall under the law on intellectual property, and if you're planning to obtain a trademark, it would be best to consult a competent trademark attorney. They is the right person to help you in making a proper trademark application.
Make sure that you find an attorney that's right for your situation. Having your own trademark attorney will give your trademark application an edge over other applications because more than anyone else, your attorney has far-reaching knowledge of the procedures and the trademark law. Your attorney can give you the right advice on the aspects of trademark filing and services.
When choosing your trademark slogan or product name, make sure that your attorney is with you. He would likely suggest getting a trademark report first. By searching the internet and the site of USPTO, you can obtain a report of existing trademarks. If you have questions about the cost of registering trademarks and the registration procedures, your attorney can counsel you on such matters.
If you have your trademark attorney, you can handle almost any situation including situations that of receiving special letters like a cease and desist. This happens when another party believes that you have infringed their trademark. With an attorney, you can get the right assistance.
That is why you need to be very careful in choosing your trademark attorney. Don’t just pick any recommended attorney from an advertising or referral service. Chances are these persons are not that capable, with little knowledge and experience. This is also true in the case of advertising, where most of the lawyers provide impersonal services and they run their services like factories. Choose an attorney that gives individual attention to trademark matters, licensed or registered, and observes professional ethics. If you can find one with all the qualifications and qualities, then you can expect that your trademark application will surely be approved.
Establishing Trademark Rights
Trademark rights arise from either
- actual use of the mark, or
- the filing of a proper application to register a mark in the Patent and Trademark Office (PTO) stating that the applicant has a bona fide intention to use the mark in commerce regulated by the U.S. Congress. (See below, under "Types of Applications," for a discussion of what is meant by the terms commerce and use in commerce.)
Federal registration is not required to establish rights in a mark, nor is it required to begin use of a mark. However, federal registration can secure benefits beyond the rights acquired by merely using a mark. For example, the owner of a federal registration is presumed to be the owner of the mark for the goods and services specified in the registration, and to be entitled to use the mark nationwide.
There are two related but distinct types of rights in a mark: the right to register and the right to use. Generally, the first party who either uses a mark in commerce or files an application in the PTO has the ultimate right to register that mark. The PTO's authority is limited to determining the right to register. The right to use a mark can be more complicated to determine. This is particularly true when two parties have begun use of the same or similar marks without knowledge of one another and neither has a federal registration. Only a court can render a decision about the right to use, such as issuing an injunction or awarding damages for infringement. It should be noted that a federal registration can provide significant advantages to a party involved in a court proceeding. The PTO cannot provide advice concerning rights in a mark. Only a private attorney can provide such advice.
Unlike copyrights or patents, trademark rights can last indefinitely if the owner continues to use the mark to identify its goods or services. The term of a federal trademark registration is 10 years, with 10-year renewal terms. However, between the fifth and sixth year after the date of initial registration, the registrant must file an affidavit setting forth certain information to keep the registration alive. If no affidavit is filed, the registration is canceled.
Types of Applications for Federal Registration
An applicant may apply for federal registration in three principal ways.
- An applicant who has already commenced using a mark in commerce may file based on that use (a "use" application).
- An applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application). For the purpose of obtaining federal registration, commerce means all commerce which may lawfully be regulated by the U.S. Congress, for example, interstate commerce or commerce between the U.S. and another country. The use in commerce must be a bona fide use in the ordinary course of trade, and not made merely to reserve a right in a mark. Use of a mark in promotion or advertising before the product or service is actually provided under the mark on a normal commercial scale does not qualify as use in commerce. Use of a mark in purely local commerce within a state does not qualify as "use in commerce." If an applicant files based on a bona fide intention to use in commerce, the applicant will have to use the mark in commerce and submit an allegation of use to the PTO before the PTO will register the mark.
- Additionally, under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country.
A United States registration provides protection only in the United States and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws. The PTO cannot provide information or advice concerning protection in other countries. Interested parties may inquire directly in the relevant country or its U.S. offices or through an attorney.
Who May File an Application?
The application must be filed in the name of the owner of the mark; usually an individual, corporation or partnership. The owner of a mark controls the nature and quality of the goods or services identified by the mark. See below in the line-by-line instructions for information about who must sign the application and other papers.
The owner may submit and prosecute its own application for registration, or may be represented by an attorney. The PTO cannot help select an attorney.
Applicants not living in the United States must designate in writing the name and address of a domestic representative – a person residing in the United States "upon whom notices of process may be served for proceedings affecting the mark." The applicant may do so by submitting a statement that the named person at the address indicated is appointed as the applicant's domestic representative under §1(e) of the Trademark Act. The applicant must sign this statement. This person will receive all communications from the PTO unless the applicant is represented by an attorney in the United States.
Searches for Conflicting Marks
An applicant is not required to conduct a search for conflicting marks prior to applying with the PTO. However, some people find it useful. In evaluating an application, an examining attorney conducts a search and notifies the applicant if a conflicting mark is found. The application fee, which covers processing and search costs, will not be refunded even if a conflict is found and the mark cannot be registered.
To determine whether there is a conflict between two marks, the PTO determines whether there would be likelihood of confusion, that is, whether relevant consumers would be likely to associate the goods or services of one party with those of the other party as a result of the use of the marks at issue by both parties. The principal factors to be considered in reaching this decision are the similarity of the marks and the commercial relationship between the goods and services identified by the marks. To find a conflict, the marks need not be identical, and the goods and services do not have to be the same.
The PTO does not conduct searches for the public to determine if a conflicting mark is registered, or is the subject of a pending application, except as noted above when acting on an application. However, there are a variety of ways to get this same type of information. First, by performing a search in the PTO public search library. The search library is located on the second floor of the
South Tower Building, 2900 Crystal Drive, Arlington, Virginia 22202.
Second, by visiting a patent and trademark depository library. These libraries have CD-ROMS containing the trademark database of registered and pending marks. Finally, either a private trademark search company, or an attorney who deals with trademark law, can provide trademark registration information. The PTO cannot provide advice about possible conflicts between marks.
Laws & Rules Governing Federal Registration
The federal registration of trademarks is governed by the Trademark Act of 1946, as amended, 15 U.S.C. §1051 et seq.; the Trademark Rules, 37 C.F.R. Part 2; and the Trademark Manual of Examining Procedure (2d ed. 1993).
Other Types of Applications
In addition to trademarks and service marks, the Trademark Act provides for federal registration of other types of marks, such as certification marks, collective trademarks and service marks, and collective membership marks. These types of marks are relatively rare. For forms and information regarding the registration of these marks, please call the appropriate trademark information number indicated below.
Registering a Trademark in the U.S.
- Determine whether you need trademark, patent, or copyright protection.
- Determine whether you should hire a trademark attorney.
- Identify your mark format: a standard character mark, a stylized/design mark, or a sound mark.
- Identify clearly the precise goods and/or services to which the mark will apply.
- Search the USPTO database to determine whether anyone is already claiming trademark rights in a particular mark through a federal registration.
- Identify the proper "basis" for filing a trademark application.
- File the application online through the Trademark Electronic Application System. View trademark fee information. REMINDERS: (1) The application fee is a processing fee that is not refunded, even if ultimately no registration certificate issues; that, is, not all applications result in registrations; and (2) All information you submit to the USPTO at any point in the application and/or registration process will become public record, including your name, phone number, e-mail address, and street address.
After the USPTO determines that you have met the minimum filing requirements, an application serial number is assigned and the application is forwarded to an examining attorney. This may take a number of months. The examining attorney reviews the application to determine whether it complies with all applicable rules and statutes, and includes all required fees. Filing fees will not be refunded, even if the application is later refused registration on legal grounds. A complete review includes a search for conflicting marks, and an examination of the written application, the drawing, and any specimen.
If the examining attorney decides that a mark should not be registered, the examining attorney will issue a letter (Office action) explaining any substantive reasons for refusal, and any technical or procedural deficiencies in the application. If only minor corrections are required, the examining attorney may contact the applicant by telephone or e-mail (if the applicant has authorized communication by e-mail). If the examining attorney sends an Office action, the applicant's response to the Office action must be received in the Office within six (6) months of the mailing date of the Office action, or the application will be declared abandoned.
If the applicant's response does not overcome all objections, the examining attorney will issue a final refusal. To attempt to overcome a final refusal, the applicant may, for an additional fee, appeal to the Trademark Trial and Appeal Board (TTAB), an administrative tribunal within the USPTO.
If the examining attorney raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication in the Official Gazette, a weekly publication of the USPTO. The USPTO will send a notice of publication to the applicant stating the date of publication. After the mark is published in the Official Gazette, any party who believes it may be damaged by registration of the mark has thirty (30) days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the TTAB. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process.
A certificate of registration will issue for applications based on use, on a foreign registration under Section 44 of the Trademark Act, or an extension of protection of an international registration to the United States under Section 66(a). If the mark is published based upon the actual use of the mark in commerce, or on a foreign registration, and no party files an opposition or request to extend the time to oppose, the USPTO will normally register the mark and issue a registration certificate about eleven (11) weeks after the date the mark was published. After the mark registers, the owner of the mark must file specific maintenance documents to keep the registration live.
You are responsible for enforcing your rights if you receive a registration, because the USPTO does not "police" the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.
Registering a Trademark in the U.K.
Before you apply you must search existing trade marks to see if there are any similar trade marks already in use which may affect your application for registration.
Research and provide descriptions of the goods and/or services you are going to use your trade mark on. We use a classification system which divides the goods and services into 45 classes.
Choose from the following examination services:
Standard examination (£170 when paid in full with one class of goods or service)
- No refund if your trade mark cannot be registered
Right start (£200 for one class of goods or services)
- Pay 50% on application
- No refund, but only pay the balance if you decide to continue with the application.
The online application takes about 10 to 15 minutes to complete and you can ‘Save for later’ at any point but you cannot change your trade mark once you have submitted the application.
The Copyright, Designs and Patents Act 1988 (the Act) consolidates the law of copyright, giving creators of certain works first ownership of copyright and the right to control the ways in which the works can be used. Types of work covered by the Act include literary, dramatic, musical and artistic works, sound recordings, films, broadcasts and published editions.
The Act also contains provisions relating to moral rights for creators, entitling them to be credited as the creator of the work and to object to any derogatory treatments of the work. It amends existing legislation relating to the registration of designs and the rights that registration provides. Additionally, it makes provisions for the registration of trade mark and patent agents.
Trademark Attorney - U.K.
“Attorney” is the term which is used in the United Kingdom for those individuals who are specifically qualified to advise on intellectual property law and subject to external regulation.
The protected titles “Patent Attorney” and “Trade Mark Attorney” distinguish these lawyers from “patent consultants or patent advisors” and “trade mark consultants” etc., who are unlikely to have any form of professional qualification.
Intellectual property law deals with the ownership and protection of ideas; key areas are patents (such as the “formula” for a new medicine or the blueprint for a new industrial process), trade marks (such as the Nike name or the McDonalds Golden Arch logo) and designs (such as the distinctive shape of a container).
The field of intellectual property law has many international aspects and clients can typically range from individual inventors to major multi-national corporations. Practitioners may be sole traders, employed in-house by industrial concerns or join an independent partnership.
Register Your Trademark in Canada
If you plan on selling your products in Canada, it is important that you should consider opening your own office in this country. You should also know that it is also important that you should register your trademark with Canada's Canadian Intellectual Property Office.
The Canadian Intellectual Property Office is the counterpart of The United States Patent and Trademark Office. Even if you already registered your trademark with the US Patent and Trademark Office, you should also register it with the Canadian Intellectual Property Office because of the questions of jurisdiction.
To register your trademark in Canada, you should first know all about trademarks and why it is important. First of all, a trademark is used by companies as an identity to the marketplace. With a trademark, consumers will be able to determine which company manufactured the product. You have to consider that the success of your business will depend largely on the image your company shows to the public. You have to consider that because there are quite a lot of competitors in the market today, you have to make your products stand out and be noticed by consumers. To do this, your trademark should be unique and should be eye-catching in order to get the attention of the public.
Large companies protect their reputation by protecting their trademark symbol or logo. To do this, you need to register your trademark to make it illegal for other companies to copy your trademark. By registering your trademark, you will have exclusive rights for the usage of the trademark. You have to consider that your trademark logo symbolizes your product's reliability and quality.
The Canadian Intellectual Property Office is where you will register your trademark. To register your trademark in Canada, you need to know the basics in application for trademark registration with the Canadian Intellectual Property Office or CIPO. The Trademark Office in CIPO is responsible for receiving and examining applications for trademark registration and grand registration to qualified applicants, record trademarks, maintain electronic inventory of trademark registrations and pending trademarks for qualification, and they are also responsible for opening up these records for public use to search for trademarks.
The first step is to complete the trademark office branch requirements for trademark application and registration. You will pay a filing fee of about $250 if submitted online or you can submit it through mail for a filing fee of $300. Your application will receive an application number, filing date and a file will be created. After this process, your trademark application will be marked as pending and will now move to the next step in the application process. The trademark office in Canada will inform you by phone and by mail about and acknowledgement and that status of your application. It is important that you should carefully read the received documents and make sure that there are no errors or omissions.
The next step in the registration process is the examination. A qualified trademark examiner working in CIPO will asess your application and will decide if the trademark will be approved or will be rejected. If it is rejected, you will be informed why and will be able to give you chance to revise certain objections for the rejection of your application so that it can be approved.
If your application is approved, the next step is advertising. Your application will now be published in the Trade-marks Journal issue that is published every week and is available through subscription and in major libraries across Canada. For a period of 2 months of being advertised, your application may be opposed by someone else and can be removed from the normal processing cycle until the opposition is resolved. The main reasons for opposition are because of the similarities between the opposition's trademark and your trademark.
The next step is the allowance for registration. You have to consider that this does not exactly mean that your trademark is already registered. During this process, you will be required to submit a registration fee. And, from this step, your trademark will now become a registered trademark and you will have exclusive rights to use the trademark for your products.
As you can see, the process will take some time. If you don’t know about the step-by-step process in trademark registration in Canada, it is recommended that you should hire an intellectual property lawyer in Canada. They specialize in trademarks, patents and copyright. They will be able to guide you with the requirements needed and you can be sure that your trademark will be approved as soon as possible by CIPO with the assistance of a lawyer that specializes in this field.
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