WHAT IS A TRADEMARK?
We understand by mark any sign that can represented graphically and which is used
to differentiate in the market products or services from different companies.
The mark is a market tool, which allows consumers to identify and recognize the
products and services offered by a certain trader.
Mark legislations in the different countries determine specifically the signs that
may or may not be a mark. In most countries, the mark must fulfill two requirements
in order to obtain a valid registration:
WHAT SIGNS CAN ESTABLISH A TRADEMARK?
- Having a distinctive power and
- Being graphically representable.
The following signs can be protected as a mark:
WHAT IS A TRADEMARK FOR?
- Words or word combinations.
- Images, figures, symbols, graphics and drawings.
- Letters, numbers and their combinations.
- Three-dimensional forms, including wrappings, packages and the shape of the
product and its presentation.
- Colour or a combination of colours.
- Signs perceived by the senses (sound, smell, taste and touch), as long as
they overcome the obstacle of the graphic representation requirement.
- Any combination of the aforementioned signs.
The main function of marks is to identify the commercial origin of the products
or services they refer to.
The mark also passes on to the consumers the idea that all products or services
identified with the same mark are provided with the same quality and, therefore,
are superior or inferior to other products or services of the same kind.
The main aim for the holder of a mark is that this mark reaches goodwill in the
market. Goodwill presupposes the preference that consumers will grant to the products
or services provided with this mark.
WHY IS IT ADVISABLE TO PROTECT A TRADEMARK?
Taking into consideration the important amounts of money invested to create a mark
(naming), and for the advertising and promotion of products and services (marketing)
identified with it, the non-authorised use of the mark would entail an important
damage of the rights, business and prestige of the legitimate owner.
Hence the importance of giving the necessary protection to marks.
The only effective way for the company to protect the asset represented by the
mark is registration.
The registration of the mark provides the holder with the exclusive right to use
it and with an effective protection against copy, imitation, misappropriation, forgery
of the mark or use of its reputation.
Submitting an application for a mark and its registration legitimises the holder
of the mark to carry out the necessary legal actions against those who commit
misappropriation of the sign or use the sign without the holder's consent.
Likewise, it is important to protect the mark in accordance with the business
and economic attraction it represents for the holder, who will be able to make
deals and investments or obtain credits with the support of the commercial value
of the mark or the potential future benefits.
WHAT KIND OF TRADE MARKS ARE THERE?
There are different kinds of trademarks:
I. DEPENDING ON THE SIGN THAT ESTABLISHES THE MARK
Marks that identify a product or service with one or more words. They must be
phonetically distinguishable form other products or services of the same sort.
Example*: Reliance, Apple, Microsoft, Coca-Cola, Pepsi, and TATA
Marks made of figures, drawings or logotypes which differentiate visually a mark.
They are distinctive figures that cannot be recognized phonetically or auditorily,
but only visually.
* All marks are Registered Trade Marks
Marks made of figures, drawings or logotypes which differentiate visually a mark. They are distinctive
figures that cannot be recognized phonetically or auditorily, but only visually.
* All marks are Registered Trade Marks
They are the result of the combination of two or more signs of different kind.
They are generally combinations of words with drawings, designs or logotypes
* All marks are Registered Trade Marks
It includes objects represented in three dimensions, such as packages, wrappings,
* All marks are Registered Trade Marks
II. DEPENDING ON THEIR POPULARITY
All signs that identify in the market certain products or services but that do not
enjoy a significant or relevant popularity among consumers.
It refers to marks that are known by the general public. Besides, for a mark to
be considered well-known, there must be a generalised opinion that the products
or services under that mark are top-quality products or services.
* All marks are Registered Trade Marks
The well-known mark imposes itself to the principle of speciality of marks, therefore,
the use by third parties of the marks Coca-Cola, Rolex and Ferrari will not be allowed,
even it is about distinguishing products or services which are not directly related to
the products or services included under the well-known mark.
Some legislations distinguish as well Renowned marks:
those which thanks to
the turnover of products or services they include, the intensity or geographic
scope of their use, the assessment or prestige reached in the market or any other
cause, are generally well-known by the specific sector of the public to which the
products or services under that mark are directed to.
III. DEPENDING ON THE HOLDER
Those that are exclusively held by a specific individual or legal entity
* All marks are Registered Trade Marks
Those marks registered by an association that wants to differentiate the products
or services of its members from those of the persons who do not belong to the association.
The holder of the mark is the association and there are several persons who are members of
the association and are authorized to used the mark.
* All marks are Registered Trade Marks
IV. DEPENDING ON THE OBJECT THEY REPRESENT
Signs that only represent products.
* All marks are Registered Trade Marks
Signs used to represent services offered by a specific individual or legal entity.
* All marks are Registered Trade Marks
Those that guarantee common characteristics, especially the quality, the components
and the origin of the products produced or distributed or the services offered by
individuals or legal entities who are duly authorised and monitored by the holder
of the mark.
* All marks are Registered Trade Marks
V. DEPENDING ON THE SENSE THAT PERCEIVES THEM
Those that are made up of a smell. The smell must be so characteristic and distinctive
that it cannot be mistaken or associated with another. For instance, a cherry smell mark
for lubricants. The main obstacle for the registration of a smell mark is to fulfil the
requirement of graphic representation.
Those signs that are perceived by the hearing sense. There are signs that are distinguishable
by their distinctive and exclusive sound. The main obstacle for the registration of a sound
mark is to fulfil the requirement of graphic representation.
Signs that are perceived by the touch sense. Like taste marks, there is no registered touch
mark yet. Their main obstacle is the requirement of the graphic representation of the mark.
HOW CAN THE RIGHT TO A TRADE MARK BE OBTAINED?
The right to a trade mark may be obtained in two ways:
1) BY USE:
The right to a mark belongs to whoever uses a specific sign for the first time
in an effective way to designate products or services on the market.
Some legislation includes the protection of non-registered marks if they have a
certain popularity in the market and are recognised by consumers.
2) BY REGISTRATION:
The creation of the exclusive right to a mark is obtained by registering the sign at
a Mark Office.
Through registration, the holder obtains the right to exclusive use of the mark,
as well as the right to forbid third parties to use identical or similar signs.
The protection granted by the registration of a mark is broader than the protection
conferred by its simple use. Hence, the enforcement options associated with a trade
mark are more effective because it is easier to prove who the holder is.
WHEN IS IT REFUSED TO REGISTER A TRADEMARK?
1. ABSOLUTE PROHIBITIONS
There are certain circumstances that make a mark inappropriate to operate in the
market and prevent their access to registration.
The following signs can never be registered as a mark:
2. RELATIVE PROHIBITIONS
- Signs that cannot be represented graphically.
- Signs that have no distinctive nature; that is, they cannot differentiate
one product or service from another.
- Marks made up exclusively of signs that have become usual or common to
designate the products or services they refer to.
Example: the word INTERNET cannot be registered for computer network services.
- Marks made up exclusively of signs used in trade to designate a sort, the quality,
quantity, destination, value, geographic origin or the time of production of the
product or the provision of the service, or any other feature of the product or
Therefore, one cannot register names such as "extra" or "supreme" or geographical
names to differentiate products or services from the area designated by the mark.
The prohibitions included in Law will not be applied if the marks implied have acquired,
for the products or services they want to register, a distinctive character as a result of
the use of the mark. This happens when, as a result of intense use in trade, advertising,
etc., the mark reaches such a degree of popularity among consumers that they identify fully
and without mistake the product or the service. Example: TETRAPACK.
- Marks that consist of a shape imposed by the nature of the product, which is
necessary to obtain the technical result or which gives a substantial value to the
product or service.
This includes three different prohibition cases that refer to three-dimensional marks.
With the first prohibition (shapes imposed by the nature of the product), the
aim is to avoid the protection as a mark of common or generic simple shapes of
For example: the common shape of a toothbrush.
The second prohibition refers to the necessary shape to obtain a technical result.
In this case, the aim is to prevent the protection with a mark right of a shape whose
aim is to obtain technical advances in relation to the previous product, that is, a
formal change that should be protected by a patent or utility model.
Example: the hexagonal shape of a screw head.
The third prohibition concerning the shapes that give a substantial value
to the product wants to prevent the protection with a mark right of a three-
dimensional form that has all the characteristics and is aimed at fulfilling
the function of an industrial design.
- Marks made up of signs against the law, public order or good manners.
For instance, those supporting terrorism or including degrading or racist names.
- Marks made up of signs that may lead the public into error, for example, about
the nature, the quality or geographic origin of the product or service.
This includes misleading signs that provide erroneous information about the
products or services that want to be registered and can create confusion among
consumers about the nature or the origin of the products or services it designates;
Example: Bordeaux for all sorts of wine.
- Marks that reproduce or imitate the name, coat of arms, flag, medals or
other symbols of the countries or intergovernmental organisations.
The aim is to prevent a company from using the signs that are a symbol of the state.
However, they can be part of a mark but always as a secondary element.
Relative prohibitions are addressed to the protection of third persons' previous
rights that could be affected by the registration of the subsequent mark. For its
application, it is necessary for the priority holder to present his objection.
- EXISTENCE OF A PREVIOUS MARK.
A mark cannot be registered:
- EXISTENCE OF AN INTELLECTUAL OR INDUSTRIAL PROPERTY RIGHT DIFFERENT FROM THE MARK.
- When it is identical to a previous mark and the products or services for which
the mark is applied for or registered are identical to those protected under the
Example: trying to register the mark Mc Donald's for food when a mark Mc Donald's
for food is already registered.
- When, because it is identical or similar to the previous mark and the products or
services under both marks are identical or similar, there is a risk of confusion
among the public. The risk of confusion also includes the risk of association with
the previous mark.
Example: trying to register the mark LAKOSTEE for shoes when there is a registration
for a mark LACOSTE for clothes.
- When it is identical or similar to a previous mark that is renowned or well-known,
even if the products or services the mark designates are different to the ones
designated by the previous mark.
Example: trying to register the mark NIKE for cars.
No mark registration is possible of literary or artistic creations protected by copyright
(for instance, a slogan or a drawing) or of creations protected by an industrial property
right (for instance, an industrial design).
- EXISTENCE OF A NON-REGISTERED MARK OR ANOTHER PREVIOUS DISTINCTIVE SIGN.
The registration of a mark will not be possible when there are previous rights protecting
a non-registered mark or another distinctive sign used in trade.
- EXISTENCE OF RIGHT RELATED TO PERSONALITY.
No mark registration is possible of a name, surname or any other sign related to
the own image of an individual, registered name, trade name or designation of a
legal entity different from the person applying without their consent. The aim is
to prevent the exploitation of other persons' name and image.
WHAT TERRITORY IS COVERED BY THE PROTECTION OF MY MARK?
The protection of the mark covers the geographic territory of the country or community
where its protection is requested and registration is applied for.
Therefore, depending on the territory, the mark can be a:
WHAT DOCUMENTS REQUIRED TO FILE TRADEMARK APPLICATION IN INDIA ?
- Indian mark. Valid only in the India as it has been requested in
accordance with Indian Trademarks Law
- Community mark. Single register granted by the Office for Harmonization in the
Internal Market (OHIM), valid for the whole territory of the European
Union regulated by the Regulation CE 40/94 on the community mark.
- International mark. Protection granted by the World Intellectual Property Organization
(WIPO), in accordance with the Madrid Agreement (1891, act in force:
Stockholm 1967) and with the Madrid Protocol(1989), to the signatory countries of
the treaty. It does not consist of a single mark but of a group of national marks with a
common application procedure.
In order to proceed to the registration of a mark, you need to submit an application
form addressed to the competent organization
and indicating the following data:
TRADE MARKS REGISTRATION IN INDIA
- Applicant Name, Address, Nationality and Legal Status.
- Representation of the mark exactly as you want it registered
- Products and/or services the mark is going to identify in accordance with
the International Directory.
- Other documents (depending on the legal status of the applicant)
- Priority certificate
- Authorization of the representative
- Proof of Use of Trademark
1. THE APPLICATION
Application for registration of an ordinary trademark (including a service mark) must be filed in Form
TM-1. The Form must be filed in triplicate accompanied by 5 additional representations of the Mark. Apart
from this, 1 representation must be affixed to the Form itself.
Application for registration of a trademark claiming Convention Priority must be filed in Form TM-2. To
register a Collective Mark the application must be filed in Form TM-3 and for Certification Marks the application
must be filed in Form TM-4.
All applications must be accompanied by the prescribed official fee and a Power of Attorney, if filed through
an agent. The Power of Attorney must be made in the prescribed form, Form – TM 48. It must be signed by the
Applicant and duly stamped. The Power of Attorney can be filed subsequent to the filing of the application but
within a period of preferably 3 (three) months from the date of filing of the application.
2. THE TRADE MARKS REGISTRY HAVING JURISDICTION
There are 5 Trade Marks Registries in India. These Registries are located in Ahmedabad, Delhi, Mumbai, Chennai
and Calcutta. An application must be filed at the Trade Marks registry within whose territorial jurisdiction the
Applicant is located. For applications originating from outside India, (and if the Applicant does not have a place
of business in India) the appropriate Registry is the one in whose jurisdiction the principal place of business of
the agent in India is located.
3. PRIORITY CLAIM
India ratified the Paris Convention in December, 1998. An application for registration of a trade Mark claiming
convention priority can be filed within 6 (six) months from the date of filing of corresponding application in
the respective jurisdiction. To claim priority, a certified copy of the convention application is required.
Intent to use applications can be filed in India.
5. TRADE MARK SEARCH
It is desirable to conduct a Trade Mark search to ascertain the existence of prior registrations of identical
marks. Thus far it has been rather cumbersome to conduct trademark searches in India because it was to be done
manually. The digital database of registered and advertised trademarks is now available. This has made trademark
search easy and expeditious.
A Trade Marks search can be conducted by making a formal request for search in Form TM-54. Each such request
must confine to a given class. The Search Report will be made available within 30 days from the date of request.
The new law provides for expedited search. An application for expedited search must be filed in Form TM-71
and a report will be issued within 7 days from the date of request. The fee for expedited search is 5 (five)
times the ordinary fee.
6. COMPANY NAME SEARCH
As per the new law (Rule 32) a request can be made to the Registrar of trademarks (in Form TM-11) to cause
a search and issuance of a certificate to the effect that no trade mark identical to the name of a company
has been registered or is pending for registration with the Registrar.
7. DISTINCTIVENESS OPINION FROM THE REGISTRAR
One of the important features of the Indian trademarks law is that the Registrar’s opinion can be sought as to
the distinctiveness of a trademark. A request to this effect can be made in Form TM-55. The Registrar will
advice whether the Mark proposed to be registered is prima facie distinctive. The Registrar will give his
advice ordinarily within 7 days of filing this request.
8. PROSECUTION OF APPLICATION
Upon filing a trademark application, the Trade Marks Registry will issue cash receipt bearing the Indian
trademark application number. Ordinarily within 30 days from the date of filing, the Trade Marks Registry
will issue a copy of the Additional Representation bearing the Application Number and Date of Filing.
As per the new law, an Applicant for registration of a trademark is entitled to make a Request for Expedited
Examination. This request, to be filed in Form TM-63, must be filed along with a declaration stating the reason
for such request. The official fee for an expedited examination is 5 times the application fee. In the event an
applicant files a request for expedited examination, the Registrar will issue the examination report within 3
months from the date of request.
The specification of goods or services if exceeds more than 500 characters, the prescribed fee must be paid
for each additional character. Also an Application in Form TM-61 must be filed along with the application for
registration of the mark, if the number of characters in the goods/service specification exceeds 500.
Typically the office action will set out various objections concerning the registrability of the Mark. If
citation objections are raised, the Examiner will append a search report mentioning the particulars of the
prior registrations. The applicant is required to reply to the First Office Action within three (3) months
from its date of communication.
The applicant, if complies with the requirements of the Trade Marks law, the Mark will be accepted in due
course. The Trade Marks Registry thereafter advertises the Mark in the Trade Marks Journal.
The Mark remains open to opposition for three (3) months, which is extendible for a further 1 month upon request,
in the prescribed form, by a person interested to enter opposition. If a Notice of Opposition is filed within this
period, the application enters the opposition proceedings which involves serving a copy of the Notice of Opposition
by Registrar on the Applicant, the Applicant’s counter statement within [2 months from the date of receipt of Notice
of Opposition], the evidence by opponent, the further evidence by the Applicant, and hearing, if any and the Registrar’s
Decision allowing or rejecting the opposition.
If there is no opposition against the proposed registration or the opposition proceedings have been decided
in favor of the Applicant, the Trade Marks Registry will proceed to grant the Registration.
11. TERM OF REGISTRATION & RENEWAL
The Mark upon registration will be in force for a term of Ten (10) years. It must be renewed every Ten (10)
HOW MUCH DOES IT COST TO REGISTER A TRADE MARK?
The cost depends upon the work assigned and complexity of work and which varies
depending on the service. for more information about cost and requirements, please
WHAT RIGHTS ARE GRANTED BY THE REGISTRATION OF THE MARK?
The exclusive rights granted by the registration of the mark consist of the following
LIMITS OF THE MARK RIGHTS
- Right of exclusive use of the mark in the market, and in particular:
- To designate with the mark the corresponding products and services.
- To prevent non-authorised third parties from using an identical or similar mark
for products or services similar to the ones under the registered mark. To use
the mark for advertising purposes
- To prevent by administrative proceedings the registration of marks that can be
confused with you own.
- To request before the Courts the cancellation of subsequent marks that
become confused with yours.
- To transfer, sell, licence the mark as any other asset of the company.
Although it is true that the registration of the mark grants the holder the faculty
to prohibit the use of the mark by third parties, this faculty has some limitations.
The holder of a mark cannot prohibit:
HOW MUCH DOES THE EXCLUSIVITY RIGHT GRANTED BY THE MARK LAST?
- The use of a mark by a third person when it is necessary to indicate the destination
of the product or service, such as accessories or spare parts.
- The use by a third person of the name and address.
- The use of indications related to the sort, quality, quantity, destination, value,
geographic origin, the time of obtaining of the product or offering of the service
or other characteristics, as long as this use is in good faith (according to honest
uses in industry and trade).
- The use of a previous right of local scope (when that right is recognised
by the relevant national laws).
In most countries, the registration of a mark lasts 10 years, which are renewable indefinitely for 10-year periods.
WHAT IS THE PROTECTION SYMBOL OF A REGISTERED TRADE MARK?
The symbol ®
is the sign commonly used to show consumers that the mark has been
registered. If the Trademark is not registered and applied for or under registration
then applicant use TM
IS IT COMPULSORY TO USE THE TRADE MARK?
Most national legislations regulate the principle of the trade mark use. In accordance
with that principle, the holder of a trade mark must use the mark in trade in a real
and effective way.
The European Directive 89/104
stipulates that the holder of the trade mark must
"...make an effective use of the mark in the Member state in question, for the
products or services for which it has been registered...".
Although the directive does not give a precise definition of the concept "effective use",
it is assumed that that concept includes at least bringing to the market products and
services, in a way that the simple preparation to bring them to the market will not be
considered an effective use.
The use of the trade mark must not be confused with its commercial success, as
the only thing that matters is the use of the mark as a distinctive sign.
Likewise, the required "effective use", will have to be made in relation to the
products and services for which the mark has been registered.
A) USE BY THE HOLDER
It is normally the holder who makes use of the mark. However, there are many other
ways to use a mark.
considers that the holder is making an effective use in the following cases:
B) USE BY AN AUTHORISED THIRD PERSON
- The use of the mark in a way that it differs in elements that do not alter the
distinctive character of the mark in the form under which it has been registered;
- Using the community mark in products or their presentation in the Member state in
question only for exportation purposes.
Often, the holders of a trade mark grant its use to a third person, especially by
means of a licence.
According to that, if a third person, with the holder's consent, is the one who
uses the mark, that use will be enough to fulfil the obligation of effective use
of the mark required by the Directive.
ARE THERE ANY SANCTIONS FOR NOT USING A TRADE MARK?
The holder of a registered trade mark who is not using it is preventing third persons
from using the sign used as a mark. In order to prevent this from happening, the directive
establishes certain sanctions in case of "non-use" of the trade mark.
The main sanction for the cases of "non-use" of the mark is the expiry of the registration.
The expiry of a mark will be declared if the mark has not been used for an uninterrupted
five-year period with no justified causes.
B) IMPOSSIBILITY OF OBJECTION
Another sanction in case of "non-use" of the mark, is the impossibility to use
objection against the registration of new marks.
That is, if a registered trade mark has not been "used effectively" in trade,
this mark can never be invoked to object to a registration or to apply for the
cancellation of the registration of a subsequent mark
TOLERANCE OF THE USE OF A SUBSEQUENT MARK
When the holder of a registered trade mark tolerates for some time (normally five
years) the use of a subsequent mark, he cannot apply for the cancellation of that
mark nor prevent its use by the holder, unless he has acted in bad faith.
This provision was created to guarantee the highest security for the new applicant
who wants to exploit a mark and, at the same time, to ask mark holders for some
diligence in the defence of marks.
The limitations to mark rights, as a consequence of tolerance, depend on the behaviour
of the previous mark holder as well as the subsequent mark holder. The limitations will
become effective if the previous holder tolerates the use of the subsequent mark and if
the holder of the latter does not act in bad faith.
A) TOLERANCE CONDUCT
This conduct can only come from the previous mark holder, who tolerates the use of
the mark even if aware of it. It must be for an uninterrupted five-year period.
This concept only affects registered trade marks, whether they are National,
or Community marks.
B) ABSENCE OF BAD FAITH
The limitations of the mark rights in the case of tolerance, will only become effective
if the subsequent mark has not been applied for in bad faith.
Bad faith has to be assessed in relation to the moment when the registered mark application
Problem: the Directive does not define, in any of its provisions, the concept of
"bad faith", which can provoke many interpretations.
HOW CAN A MARK OWNED BY A THIRD PERSON BE USED?
Marks can be the object of different sorts of contracts, some of them used to authorise
third parties for the use of the protected sign.
A) CESSION OF A MARK
Like patents, the mark is an exclusive right that can be the object of legal deals,
Cession can be total or partial; there is no restriction concerning the products
or services that can be included under the mark, nor concerning the way in which
the mark has to be used (in time as well as in space).
For the cession of a mark to be effective for third parties, most countries
require the cession to be carried out in writing and that the change of ownership
is recorded at the relevant marks register.
B) MARK LICENCE
The mark licence is the contract by which the holder of a trade mark gives to a
third person the right to exploit the mark in exchange of an economic consideration.
The licence can be exclusive or not, granting it for the whole or part of the products
and services, and for the whole country of part thereof.
The mark licence must be agreed upon in writing and normally its registration is
C) OTHER CONTRACTS
The mark can also be the object of a mortgage, bond or other real property rights,
the object of seizure or other measures resulting from an enforcement procedure.
WHAT CIRCUMSTANCES PROVOKE THE CANCELLATION OF MY MARK?
A mark can be cancelled for the following reasons:
- Non-renovation of the mark registration.
- Resignation of the mark holder: it must be in writing and submitted to the relevant marks organisation.
- Lack of effective useof the mark during an uninterrupted five-year period for the products or services for which it has been registered.
- Vulgarisation of the mark: it happens when the mark becomes the common designation of the products or services it designates.
- When the mark, as a consequence of the used made of it by the holder or with his consent, may lead the public into error about the nature, quality or geographic origin of the products or services it designates.
- Most of the expiry causes mentioned are regulated in most national mark legislations.
Trademark Registration in U.S.
1. U.S. REGISTRATION PROCESS / BENEFITS TO FEDERAL REGISTRATION
- For registering the mark by infringing the absolute or relative prohibitions of registration.
- When the application is made in bad faith.
- State Registration. Registering a trademark at the state level can be done in addition to, or in lieu
of, federal registration. Registering a mark at the state level may be accomplished if the mark is primarily to be
used in a single state and there is no use in interstate commerce. Obtaining state registrations is a quick and
inexpensive process, and serves to provide prima facie evidence of a mark’s ownership in that state and inexpensive
process, and serves to provide prima facie evidence of a mark’s ownership in that state and ensures that the registration
will be found if a potential competitor searches the state records.
- Federal Registrations. The U.S. PTO maintains two separate registers on which a mark may be registered:
the Principal Register and the Supplemental Register. Registration on the Supplemental Register is available to marks
that do not qualify for registration on the Principal Register because they are not inherently distinctive and have not
yet acquired secondary meaning, but are still capable of distinguishing the owner’s goods or services.
Registering a mark on both registers provides the following benefits:
- the right to use the ® symbol, “Registered in the Patent and Trademark office”, or “Reg. U.S. Pat & Tm.
Off.” , and
- the right to bring suit in federal court for trademark infringement, regardless of diversity of citizenship.
Registering a mark on the Principal Register rather than the Supplemental Register is preferable as it offers
certain important advantages, including:
2. FILING A U.S. TRADEMARK APPLICATION
- Prima facie evidence of exclusive right to use. According to Section 7(b) of the Lanham Act, registration
on the Principal Register provides evidence of the validity of the registered mark and of the mark’s registration,
the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark in connection with the
goods or services covered y the registration
- Incontestability. Once a mark registered on the Principal Register has been used exclusively and continuously
for five years and an affidavit attesting to that continuing use has been filed, the mark becomes incontestable, An
incontestable registration can no linger be cancelled because of descriptiveness or prior use, though it can be cancelled
if it becomes generic or if use is abandoned.
- Constructive nationwide use and notice of ownership. Registration on the Principal Register provides
constructive notice of a trademark owner’s claim of ownership of the mark and nationwide rights in the mark. This
eliminates an infringer’s defense of good faith adoption and use made after the registration date. Under common law,
the mark is only protected in the particular geographical area where the mark is used in commerce. Marks registered
under state law only provide protection in the particular state where they are registered.
- Extension of Rights. A federal trademark application or registration on the Principal Register
is more useful in obtaining registrations in foreign countries. For instance, a registration on the Supplemental
Register cannot be used as the basis for a Madrid Protocol application.
- Protection from Illegal Importation. By deposition registrations with U.S. Customs,
owners are able to bar the importation of infringing goods.
- Description of Goods/Services. Registration of a trademark is secured by filing an application
with the U.S. PTO for a specific description of goods and/or services. For organizational purposes, goods
and services are divided into 45 classes. The trademark being used on a product and/or service will fall
into least one of these classes. The U.S. PTO provides references to help aid in the selection of the classes
for one’s particular goods and/or services. For each class in which the mark is used, a specimen, or real-world
example of how the mark is displayed to consumers, must be submitted to the U.S. PTO to secure a registration.
Pictures of the goods with the mark affixed to them, or labels, tags, or containers for the goods are considered
to be acceptable specimens of use for a trademark. For a service mark, specimens may include examples of advertising,
such as magazine advertisements or brochures. Web sites also are common sources of service mark specimens.
- Intent-to-Use Applications. While trademark rights are generally accorded to those who first use
a mark, it is possible to secure rights without use by filing an ‘intent to use” application at the PTO. An
applicant places the public on notice of its intent to use the mark in interstate commerce form the date of
filing such an application. This can be beneficial by providing businesses time to develop marketing plans
prior to using a mark while preserving rights in the mark. Although registration is encouraged, as seen by
the many benefits previously listed, registration does not guarantee that a senior user will not object to
use of your mark.
- Online Filing with the U.S. PTO. The U.S. PTO has made filling new application even easier with
its online system, located at http:/www.uspto.gov/teas/index.html. from here you can file an application to
register your mark on either the Principal or Supplemental Registers. When applying to register your mark on
either the principal or Supplemental Registers. When applying to register a mark on the Principal Register,
the TEAS system provides two form options. The first, called the TEAS Plus Form, requires that applicants
select descriptions of goods directly from the USPTO’s Acceptable Identification of Goods and Services Manual.
The filing fees is reduced to $275 per class if an applicant utilizes the TEAS Plus Form. The less restrictive
TEAS form allows an applicant to customize its description of goods in a free-text format. The filing fee for
using this form is $325 per class.
Other types of marks that can be registered include:
Below is check-list of the most critical information you will need to obtain from a client before an application can be filed
- Certification Mark: designates a mark that is used or will be used by authorized
persons on designated goods and/or services to indicate, for example, a particular regional origin of the
goods, a characteristic of the goods or services, or that labor was performed by a particular group.
- Collective Membership Marks: Used to indicate a membership in a specific organization;
e.g., a social club or labor union. An example would be the Knights of Columbus.
- Collective Trademark/Servicemark: designates that the mark will be controlled by its members by
a specified method of control. The National Association of Realtors is an example of a collective trademark.
- Name of applicant
- Address of applicant.
- Jurisdiction of applicant’s organization (if a business); citizenship, if an individual
- The mark. (Standard character word mark, design, word & Design, slogan, etc.)
- Description of goods and/or services in connection with which mark will
be used or is intended to be used.
- Date of first use anywhere and date of first use in commerce (if mark is in use).
- Specimen of mark as used on the recited goods/services (if mark is in use)
- Name and title of signatory
From the time an application is filed, an applicant can expect examination of the application to take
place in about five to seven months. At that time, the examining attorney may issue an office action raising
any objections to the application and requesting a response from the applicant. A significant majority (greater
than 80%) of all trademark applications will receive some type of office action. The deadline for resolved in
several ways depending on the nature of the objection and the complexity of the response, including filing an
online response, submitting a paper response, or telephoning the examining attorney.
If the examining attorney determines the response or amendments to the application have resolved all of the
outstanding issues, the application will then be approved for publication. If not, the examining attorney will
issue a second and final office action, for which the applicant will have another six months to respond. The
applicant may file a Notice of Appeal to the Trademark Trial and Appeal Board (TTAB) if the dispute is substantive
in nature. If dispute is procedural in nature, the next step is to file petition to the Commissioner.
Below is list of some of the more common objections issued in an office action and the corresponding TMEP sections:
3. Filing an International Trademark Application
- The proposed mark is confusingly similar to a prior filed or registered mark at the PTO (TMEP §1207).
To overcome such an objection an applicant typically argues that cited marks are distinguishable in sight,
sound, or overall commercial impression, that the goods/services are dissimilar, or that the marks appear
in unrelated channels of trade.
- The proposed mark merely describes or deceptively misdescribes characteristic or quality of the applicant’s
good or services (TMEP §1209). Overcoming this objection can be a challenge, however applicants generally argue
that the mark is suggestive of t he goods or services for which registration is sought, rather than being descriptive.
Applicants can demonstrate suggestiveness by showing that imagination or thought is required for consumers to make the
connection between the mark and the goods or service for which it is used.
- The proposed mark is generic (TMEP §1209.01 (C)). To overcome an objection on the grounds of generalness an
applicant must show that the alleged mark is capable of indicating a source or origin of the goods or services.
- The description of goods or services is too broad and is rejected as being indefinite. An applicant will be required
to amend the description to provide more specificity (TMEP §1402).
- The proposed mark is primarily geographically descriptive or geographically deceptively misdescriptive of applicant’s
goods or services do not originate or purport to originate from a specific geographic location, or that primary significance
of the term is not known as geographic location.
- The proposed mark is primarily merely a surname (TMEP §1211).
Factors to consider include the commonality of the surname, whether the term has the “look and feel” of a
surname, and if the term has any recognized meaning other than a surname.
- The proposed mark, as a whole, is functional because it is essential to the use or purpose of the product
(TMEO §1202.02 (A)). A feature is functional as a matter of law if it is “essential to the use or purpose of the
product or if it affects the cost or quality of the product.” TrafFix Devices, Inc. v. Marketing Displays, Inc.,
532 U.S. 23, 58 USPQ2d 1001, 1006 (2001).
- The U.S. PTO will request a disclaimer of a portion of a mark that by it self would be descriptive of
or generic in connection with the goods or services for which the mark has been applied. If the applicant
grants the disclaimer, it gives up the exclusive right to that term apart from the mark as shown. For example,
if the applied – for mark were SPECTRA BUILDING in connection with construction services, the U.S. PTO likely
would require a disclaimer of the term BUILDING but allow the mark as a whole to register.
A U.S. Trademark application or registration does not automatically protect your trademark abroad. It is not
necessary to have U.S. registered trademark before your can file for your trademark in another country.
As mentioned above, each foreign jurisdiction has its own trademark laws with which an applicant must comply.
Power of Attorneys, certified and legalized documents, and specimens of the marks are just some of his requirements
that one may encounter in foreign jurisdiction filings. In addition, not all countries are signatories to the Paris
Convention, thus priority filings may not be able to be obtained in all jurisdiction. Further, many countries allow
for a description of goods and service to be as broad as “all goods/services in class” or all goods/services under
the class heading. Every country has local counsel that can provide specialized trademark representation. It is
recommended that you engage an attorney in the United States who has good contacts with international trademark specialists.