All about trademarks
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Trademark basics
What do trademarks protect? What is a strong trademark? How to protect your trademarks? Where should I start to obtain a registration? What do trademarks protect? Trademarks represent your goodwill, the reputation of the goods and services you provide. They are an essential part of a business and they help people tell the difference between products and services from different sources. They are typically embodied in the following: • Business Names • Logos • Slogans • Domain Names • Product Packaging/Configuration • Website Design • Non-Conventional Trademarks (Colors, shapes, smells, scents, etc.) But not all words, logos or slogans can be registered as trademarks. For instance, most IP registration offices will not register marks that contain surnames, flags and governmental emblems; a name or likeness to a deceased official; marks that are deemed immoral or scandalous (the stance on this highly varies from one region of the world to another); the title of a single book and/or movie; and matter that is used in a purely ornamental manner. What is a strong trademark? Trademarks are meant to inform consumers regarding the source, the origin of the goods, not to describe the goods themselves. This is why the strongest marks typically have no meaning in relation to the goods or services for which they are used (ex: Nestlé). The more distinctive and arbitrary a mark is the wider the mark’s scope of protection will be. On the opposite end, the generic word for a type of product or service (such as blow-dryer to describe a device blowing hot air) will typically not be afforded a registration. This is because the generic word adequately describes the product, but doesn’t provide any indication as to its source. Furthermore, it would amount to granting the applicant the right to hog a generic name and prevent others from using it in any commercial setting. Finally, another typical ground for refusal of registration by authorities is what is known as “likelihood of confusion.” This occurs when the mark you want to register is similar to that of a third party and is used to describe related goods and services. How to protect your trademarks? • Choose a strong mark by avoiding descriptive “generic” names, instead pick a “fanciful” or “arbitrary” mark. The less obvious your trademark is, the better off it is. • Conduct a thorough trademark search, and make sure the trademark is available in the first place! • Make sure you select the proper class of goods for your trademark, and decide whether to register a standard character format mark, or a styled (design) format mark. • Use your mark appropriately and consistently, and use the appropriate registration symbol. This will make it easier for your customers to find you. • Know whether the mark is already being used in your own region or in international commerce (if not, an "intent to use" application must be filed) • Vigilantly monitor for infringement. For example, review your marks and brand on a weekly basis on search engines. You can use Google Alerts and social media monitoring tools including Hootsuite, TweetDeck to monitor key terms and to automate the monitoring process. • Trademarks are like a “muscle that gets stronger with use” - use it, own it, and more people will recognize it! • Take action as soon as you discover infringement, for example, by consulting an attorney and sending a ‘cease and desist’ letter. Where should I start to obtain a registration? There’s a lot of digging that you can do on your own by performing a basic web search and on the USPTO's Trademark Electronic Search System (TESS) database. Some companies may offer to help you with your application or evaluating the market value of a potential brand but unless there’s an attorney on staff, these companies will not be able to help you out with any official letters received during the registration process. So you may end up incurring additional fees. While some registration offices such as the French INPI or the Intellectual Property Office in the UK provide paying pre-registration clearance services, the USPTO does not conduct prior trademark searches and is not habilitated to give you legal advice. For those reasons, many applicants hire the services of an attorney to help them navigate through the process by conducting a comprehensive trademark search (including on those trademarks that are not necessarily registered), and preparing responses to any refusals or requirements that a registration office may issue. For start-ups in the US, reduced-price options may be available from the registration office or from your local bar association through “pro bono” divisions or law school clinic programs. Gaelle Rochenoir © Tous Droits Réservés 2015 |
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