You protect a trademark by registering the Trademark.
Historically, the registration process began with the filing of a trademark
application at the Trademark Office in each country (and/or state) where you
desire the protection afforded by a registered trademark.
Modernly, the filing of trademark applications has been
streamlined by two important changes in the law, at least if your interest is in
protecting your Trademark on an international basis.
First, while trademarks have historically been obtained on a
country by country basis, registered trademarks in Europe can be registered on a
supra-national basis by seeking to register a Trademark with the European
Community Trademarks Office. Actually, the Europeans chose to give their
trademarks office a completely different (and not a particularly informative,
but doubtlessly politically correct) name: Office for Harmonization of the
Internal Market or "OHIM" for short. There are a number of advantages in using
OHIM to register marks throughout the European Union (EU), not the least of
which is that it is far less expensive to use OMIH than it is to file Trademark
applications through each of a number of different national trademark offices. A
disadvantage of using OHIM is that the European Economic Community is not a
member of the Madrid Agreement, which takes us to the second point.
The second point relates to the adoption by the United States of
the Madrid Agreement and the Madrid Protocol. Under the Madrid Agreement and
Protocol, a US trademark applicant, may file a single Trademark application with
the United States Patent and Trademark Office and have that application serve as
a basis for an International registration which may be extended for the same
goods/services to other member states designated by the applicant.
Unfortunately, as indicated above, the European Economic Community is not a
member of the Madrid Agreement and Protocol (although the individual members of
the EU are also members of Madrid).
The Madrid Agreement and Protocol as well as the Community
Trademark are discussed in more detail later in this article.
If the focus of your business activities are exclusively in the
United States, then perhaps you will be satisfied with a Trademark registration
exclusively in the United States. But the issue does not end there as it is
possible to protect a Trademark on a state by state basis or on a federal or
nationwide basis. It is probably safe to say that most registered trademarks are
protected in the United States at the federal level, there can be certain
advantages in seeking registrations at the state level.
Deciding where to register your Trademark is a complex issue and
you will be well advised to hire a trademark lawyer to assist you in this
process. If you wish, you can contact our
offices and talk to us about the services which we offer. Or you can find a
trademark lawyer in the telephone book or through various bar associations. But,
before you have a lawyer start the Trademark registration process, you will want
to take steps to select a viable trademark, that is, you want to make sure that
your proposed Trademark is both distinctive and available for use.
As you might well imagine, registering a Trademark in every
possible country is an expensive proposition. Indeed, many trademarks are
registered only in selected countries for any one of several possible
reasons:
1. the mark is not a house mark, but rather a mark for a
particular product or service of more limited economic importance;
2. the
owner of the mark does not have the economic resources to protect the mark
everywhere;
3. the market for a particular product or service is so small
in some countries that it does not justify seeking Trademark protection there;
or
4. the product or service in question is sold under different marks in
different countries.
While the United States recently adopted the Madrid Agreement and
Protocol, this occurred only after years of opposition and it is to be noted
that the Madrid agreement and Protocol only became effective in the United
States in November 2003. The Madrid Agreement and Protocol is really two
different treaties. The Madrid Agreement came first, but was ratified by only a
limited number of countries due to certain perceived deficiencies. There were
efforts made to "fix" the perceived deficiencies in the Madrid Agreement and the
current proposal is embodied in a Protocol to the Madrid Agreement that
was recently adopted by the United States. Many of the other present non-member
countries may ultimately join the Protocol-modified Madrid Agreement.
In order to take advantage of the Madrid Agreement and Protocol, a
company or individual must be from a Madrid member country. The company or
individual can seek an International Trademark registration. However, an
International Trademark registration does not immediately result in a Trademark
registration that is enforceable everywhere. Rather, individual countries must
be designated in the resulting International Registration with an additional
cost being incurred for each country designated. Also, a number of the
individual countries can (and do) issue official actions, and/or allow
objections to be filed by third parties, to which responses must be filed by a
local trademark agent or attorney. Thus, while there can be a substantial cost
benefit to using the Madrid Agreement and Protocol filing mechanism, that cost
benefit can be illusory if objections are encountered in many of the designated
countries. As a result, the cost of protecting a Trademark internationally can
still be substantial under the Madrid Agreement and Protocol.
In contrast to the Madrid Agreement and Protocol, the filing of a
single Trademark application for a Community Trademark can result in a single
Trademark registration enforceable throughout the EU. The cost advantage of
filing for (and renewing) a Community Trademark is substantial compared to
filing for (and renewing) Trademark registrations in the individual countries
making up the EU. Also, the use of a registered Trademark in one EU country will
satisfy the use requirements in all EU countries in the
case of Community Trademarks.
Once you decide to proceed with the registration process in the
countries of interest, certain forms must be completed and official fees paid.
If the trademark includes a logo or design elements, a formal drawing depicting
the trademark must also be filed. The Trademark application identifies the goods
and/or services for which you are seeking Trademark protection. The application
is then reviewed by a government official, who is typically called a Trademark
Examiner. The Examiner may refuse or object to registration of your Trademark
for a number of reasons. It is the job of your trademark attorney to convince
the trademark Examiner that your Trademark should indeed be registered in
accordance with the laws of the country concerned. This process typically takes
between one and three years (and in some countries considerably longer), and
generally culminates with the publication of your Trademark in a government
periodical, published for the purpose of allowing third parties to contest the
registration of your Trademark by filing either an opposition or a cancellation
action. If no third party contests your application or after an opposition is
successfully resolved, your Trademark will then be registered, thereby providing
you with the exclusive right to use that trademark (and similar registered
trademarks) in that country with respect to the goods and/or services designated
in the registration (including closely related goods and/or services).
Renewing Trademark Registrations and Use Requirements
Unlike patents, Trademark registrations can last forever but need
be renewed periodically by the filing of Trademark renewal applications.
Generally, the duration of each Trademark registration (and each subsequent
renewal) is ten years. However, most countries require that registered
trademarks be used in order to be maintained and, in addition, they have laws
which allow third parties to seek cancellation of registrations for registered
trademarks which have not been used for a certain period of time (often after
two to five years of non use). When applications to renew Trademark
registrations are filed, some countries, including the United States, will
require that you submit evidence that the mark is in use. Also, some countries,
including the United States, require that evidence of use be submitted at other
times as well.
Trademark Marking and Usage
Registered trademarks must also be properly marked and properly
used. Prior to registration, trademarks should be marked and indicated as a
Trademark by use of the letters "TM". After registration, this symbol should be
changed to indicate that the mark is registered by use of the registration
symbol (®) in the United States. Use of the Trademark registration symbol (®) in
the United States prior to securing a United States Trademark registration is
illegal. Furthermore, using the letters "TM" on a term which turns out not to be
your Trademark can prove dangerous. As such, you are well advised to retain the
services of a trademark lawyer before starting use (and marking) of a proposed
Trademark to help ensure that your proposed trademark is viable, i.e., it is
both distinctive and available for use.
Often, companies in labeling products or in brochures correctly
use their registered trademarks either within quotes or all in capital letters.
In addition, it is imperative that registered trademarks be used in advertising
copy as adjectives, never as nouns or verbs. Improper use of a trademark, or
allowing others to use your trademark improperly, can result in the Trademark
becoming generic and open to use by others in the public domain. registered
trademarks can enter the public domain by other means as well. Examples of
generic terms in the United States which were once protectable registered
trademarks in the United States are "aspirin," "escalator" and "cellophane."
Reasons
for Registering a Trademark:
Valuable Asset - The
most important reason to register your Trademark is to preserve your rights in
this valuable asset. In many countries of the world, even though you have
created a Trademark and are using the trademark, if you do not register that
Trademark, you have no rights in it. A third party can misappropriate "your"
trademark and obtain ownership rights by registering before you do. Although
there are many other countries, in addition to the United States, which provide
certain rights to mere trademark users, asserting Trademark rights based on mere
use of a Trademark is expensive and time consuming, not to mention the fact that
you may fail if your usage is not sufficiently notorious. Thus, a Trademark
registration is a valuable asset for use in asserting your Trademark rights
against other parties. Furthermore, since a trademark registration is viewed as
an asset, it can be used to collateralize a loan or it can often be sold to a
third party.
Fend Off Other
Parties - registered trademarks can be misappropriated innocently by
coincidence, or intentionally, by competitors, distributors, or professional
trademark pirates. Trademark pirates can learn about new and upcoming trademarks
by attending trade shows and watching the media and thereafter seeking to
register these trademarks in strategic foreign countries. They hope to sell
these registered trademarks at a handsome profit to the companies which
introduced the Trademark. If you register first, you not only foil the trademark
pirate, you also make it easier for other parties to determine that the
Trademark is already protected when they do a Trademark search on a new
Trademark that they are considering using.
Prevent Trademark Dilution - Another
important reason to register trademarks is to prevent what is known as
"dilution". Dilution occurs when a number of companies use similar trademarks on
similar goods. Potential purchasers are then exposed to numerous trademarks that
have certain similarities as to these related goods, and this minimizes the
legal and practical value of a Trademark as a source identifier. Other companies
are much less likely to adopt a Trademark which is similar to or identical to
your Trademark if you have taken the necessary steps to register it. If you do
not register your Trademark, it is much more difficult for other parties to
become aware of your interest in the Trademark.
Potential Loss of Goodwill - Another danger
is the loss of good will which can arise by an infringing product or service of
poor quality. This can happen when someone else enters the marketplace and
commences the sale of goods or services with the same or a similar mark. If
those goods or services are of poor quality, purchasers may well associate the
poor quality item with your company, resulting in your loss of good will and
sales. However, this is less likely to occur if you register your trademarks,
since many companies take steps to avoid infringing a Trademark of which they
are aware.
Defensive
Registrations - Trademarks can also be registered in nearly all
countries in the world outside the United States as a defensive measure. In
those countries, a company or individual need not use its Trademark prior to
obtaining a registration. Therefore, even in potential markets, you can prevent
a third party from registering or using a Trademark if you are the first party
to obtain a registration. By obtaining a registration in advance of your use,
you can be virtually assured of the unfettered ability to exclusively use your
Trademark in that country provided you begin use before the registration is
subject to cancellation for non use.
Licensing the Trademark - Another reason
for registering trademarks is the monetary value of a Trademark registration
per se. Besides being a property right which can be sold or
collateralized, a Trademark can be licensed. Quite often, companies enjoy
substantial revenue in royalties from licensing their trademarks. If a Trademark
is licensed, however, it is very important, not only to register the Trademark,
but also to record the license agreements, where possible. License agreements
must be carefully drafted to assure quality control of the licensed products
and/or services by the trademark owner. A Trademark license should be reviewed
by an attorney who is knowledgeable in these matters, since the improper
drafting or enforcement of a license agreement or the failure to record a
license agreement can result in the invalidity of the
Trademark.
