Trademark Now – or Turmoil Later

While running your business, you have a million things to think about.  Customers, employees, taxes, transactions – the list is endless.  But what about protecting the company’s very identity, goodwill, and brand?  A company’s name and logo are vital to success from a marketing standpoint, and as such you should be doing everything possible to protect them.  A great place to start is by making a promise to yourself and your business that this year all of your identifiers will be properly trademarked.

Trademarking is actually a fairly simple process, and we are here to help.  The first step to registering your trademark is making sure that no one else already owns it. Using the TESS (hyperlink site) page on the US Patent and Trademark Office you can search both words and designs and be sure no one has an identical or strikingly similar business mark for the same category of goods and services offered by your company.   If you don’t own your mark, then anyone can use it and ride on your goodwill, or even damage it.

After determining your brand’s legal standing, a registration must be submitted with all of the details of your mark and specific limits on how you will use it. Ideally, the USPTO should respond to you with approval within 6 months of filing your application.  But what if you find that your mark – or a similar one – is already being used?  Even if you have been using it for a longer period of time, your registration will likely be contested.  These are tough waters to navigate, but do not fret, we are quite familiar with them. If you find yourself in this situation, give us a call immediately and we will see how we can help you to move forward in getting your business protected.

Registering your mark is not really optional any longer.  Confusingly similar or counterfeit websites, email addresses, and other indicia are rampant.  Surely if you’ve owned “Great Shipping” for 20 years and gained a reputation in your industry, a new business called “Ship Great” can’t open its doors down the road from you in the same exact field? Though that may seem to be common sense, it is not the law. Unfortunately, unless copyrighted or trademarked, a name that is clearly playing off another brand cannot be challenged legally – no matter how similar.  State trademarking, by the way, is generally useless in our opinion.   Only a Federally recognized mark has substantial business protection value.

Be proactive and give us a call today to see how we can help you keep your business, its goodwill, and its identity, safe and uniquely tied to you alone.

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Protecting Your U.S. Trademark Overseas

In addition to 84 other countries, the United States is a party to the two treaties comprising the Madrid System for international registration of trademarks.  This system provides trademark owners a cost-effective, efficient way to protect their trademarks overseas.  While not all business need to take advantage of the Madrid System, those businesses and individuals seeking to do business or market their products internationally should consider the benefits to protecting their trademark since theft of intellectual property can pose a serious threat to businesses domestic and foreign.

In order to start the process of registering a trademark overseas, the trademark owner, either an individual or a business, must first register with the United States Patent and Trademark Office. The USPTO provides information via its website www.uspto.gov/trademarks to help trademark owners understand the process of obtaining a trademark.  Once a trademark owner receives his trademark, he must understand that it is not up to the USPTO to police the trademark for him.  In other words, it is the responsibility of the trademark holder to find ways of stopping theft of his trademark, otherwise known as “infringement.”

To protect the trademark in the U.S., owners should register their mark with as many entities as possible that have the ability to help protect the trademark.  For example, U.S. Customs and Border Protection has a electronic system that allows owners to record their U.S. trademarks.  This electronic system, known as the Intellectual Property Rights e-Recordation (IPRR), is in place to assist CBP in preventing importation of trademark infringing goods.

The Madrid system for international trademarks is another way trademark owners can protect their rights.  Assuming a trademark owner has registered his trademark with the U.S., the owner may then file an international application via the International Bureau through the Office of origin.  Offices of origin are located within a trademark owner’s country if that country is a party to the Madrid System’s treaties.

An international application via the Madrid System must include the following:

  • A reproduction of the mark with a list of services it covers (classified under the International Classification of Goods and Services)
  • Designate the countries in which protection is sought (these countries must be contracting parties)
    • Designation of a contracting party is made under the treaty which is common to the Contracting Party and the trademark owner’s country (i.e. If the designated country is only a party to the Madrid Agreement and not the Protocol and the trademark owner’s country is a party to both, then the designation is made under the Agreement.)
    • This allows for three kinds of international applications:
      • Governed exclusively by the Agreement
      • Governed exclusively by the Protocol
      • Governed by both
      • Be prepared in one of the three languages of the Madrid System:  English, French, or Spanish
      • Pay the required fees through the Office of origin:
        • Basic fee
        • Complementary fee for each designated Contracting Party for which there is no individual fee
        • Supplementary fee for each class of goods and services beyond the third
        • Include certification by the Office of origin of the date the international application was presented

After the application is made and approved by the International Bureau, each designated Contracting Party may examine the trademark and determine whether it will provide or refuse protection of the mark.  Once protection is approved, the rights protected are the same as if the trademark owner had made individual registrations in each designated Contracting Party.

The international registration is dependent on the registration of the mark in trademark owner’s country or where he submits through an Office of origin.  If the trademark ceases to be in effect in the original country during that 5 year time period, then the international trademark ceases to be in effect as well.  However, after the initial 5 year time period, the international registration becomes independent from the basic registration in the country of origin.

It is very important for a trademark owner to either become very familiar with the requirements of owning a trademark in both the United States and via the Madrid System or hire someone who is very familiar with the requirements because there are many specific dates, timelines, and nuanced requirements in order to both register and maintain a trademark.  While it may seem like a lot of work, it is certainly worth the time, money, and energy to ensure your product or service is trademark protected.  You want to ensure that when consumers associate your trademark with a certain product or service that it is YOUR product or service to which they are making the association.

More information can be found by visiting the U.S. Patent and Trademark Office website at www.uspto.gov and by visiting the World Intellectual Property Organization at www.wipo.int/madrid/en.  You may also contact our firm at smorrison@customscourt.com or nmooney@customscourt.com or by calling (850) 893-0670 to get more information on U.S. or international trademarks.

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