Branding And Trademark Registration

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Tracy Caldwell
7 years ago
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1 by far the best...within Asia Asia Pacific Legal 500 (2005/2006) Market recognition is important in order for a business to compete effectively. The last decade or so has seen a proliferation of businesses that are always striving to seek attention for themselves. Novel and interesting ways of marketing have been developed in the wake of the Internet explosion. As businesses strive to make themselves known, market branding and corporate identity become all the more important. This is especially relevant with the globalisation of economies. The ease of publicising oneself in the global market has become easier, with a web presence being commonplace for many businesses. A company s brand sets it apart from its competitors. The brand can be a word, logo, name or a combination thereof. If used effectively, one s brand can, over time, be a valuable asset due to the goodwill that it generates. Like other business assets, a company s intellectual property can be valued and the value can appreciate. Trademark protection of such an asset not only protects the owner from loss of profits and from damage to reputation, but also the public in ensuring that they are able to correctly identify the source of goods and services. What should one do when developing and implementing a branding programme? How does one ensure that the money spent on advertising and marketing is not wasted because the brand is abused in another part of the world? This article addresses these questions and highlights the importance of registering brands as trademarks as well as the steps involved in trademark registration. Steps To Take In Developing A Branding Programme Brand Development And Implementation The first step in developing and implementing a branding programme is to establish and identify page 34 of 58 pages

2 what you want your brand to achieve. When doing so, a global approach is recommended. The brand should be both versatile in the traditional retail market and online, and both in your established market as well as internationally. Additionally, focus on the ability of your brand to traverse different service and product lines. Comprehensive And Overall Approach To Branding Next, look into all the details of your branding programme, such as the company name, advertising, stationery, web site, slogans and colour scheme. It is important to keep in mind that your brand is the public face of your company. Be Careful Always check that you are not infringing another party s brand or trademark. Thorough screening helps to mitigate the risk of trademark infringement claims Be Distinctive Choose a name or brand that will make a lasting impression in the marketplace. Registration Register your trademark. Registration Of Trademarks A registered trademark gives the owner or licensee the exclusive right to use the trademark in commerce. Unlike other intellectual rights, a trademark is perpetual, but subject to renewal every 10 years. A trademark is property which can be sold, assigned or licensed. Types Of Trade Marks A trademark can comprise words, names, signatures, logos, numerals, designs, shapes, colours or a combination of these elements. When selecting a trademark, one should bear in mind that the brand or trademark is intended to act as a unique identifier as to the source of the goods and / or services. The more distinctive the trademark, the easier it is to obtain trademark registration and protection. A mark that is descriptive, generic or common to the trade is generally not registrable. An invented or fanciful mark is usually a strong mark. Such a mark has no meaning other than page 35 of 58 pages

3 that which the company associates it with. Some examples of invented or fanciful marks are WD-40 and Eidos. A coined trademark is where words are used by a company to associate it with goods or services which they are not normally associated with. Examples of such marks would include Crocodile (for shirts) and Apple Computers. Such trademarks are strong and easily protected. A suggestive mark is one where English words are used which suggests the product it represents but does not describe it. Such marks include Gameboy and PlayStation for game consoles. Although these marks are weak, they can be registered if efforts are made in marketing. A descriptive mark is one where a name is used which describes the goods and services covered. Such marks are very weak unless there has been substantial advertising and marketing sufficient to enable the marks to acquire a secondary meaning. When Does Trademark Protection Kick In? It is important to note that unless and until the trademark has been registered, the applicant or user does not have any rights to the trademark. An exception to this rule is where the mark has become so well-known, and where there has been such extensive and substantial use, that the mark acquires a distinctive character. Such a right is often described as a common law right. Whilst a trademark application is ongoing and pending registration, we would advise the applicant to use the symbol next to the trademark. This serves to inform anyone who sees it that a trademark application is pending. Once a trademark has been registered, the trademark owner should use the symbol next to it. Trademark Rights Are Territorial As trademark rights are territorial in nature, the registration of a mark in Singapore gives the trademark owner protection in Singapore only. If the trademark is intended to be used outside Singapore, it is advisable to seek protection in all potential or target markets. Searches Before one embarks on a trademark registration page 36 of 58 pages

4 process, it would be prudent to carry out searches to verify whether another party is already using such a mark or a similar mark for the same or similar goods and services. There are in general two types of searches. The first is a formal search of the records maintained by the relevant trademark registry. In some jurisdictions like Singapore, online searches are possible which are relatively quick and simple to carry out and inexpensive. However, searches in jurisdictions like Indonesia and Malaysia can be more expensive and will take longer to complete because they are done manually. The second type of search is a common law search. This is done by searching other sources of information like magazines, newspapers, business directories and the Internet. In some cases, private investigators are tasked to scour the shelves of shops and department stores to verify the existence of the same or similar trademarks. Duration Of Registration Process The length of the registration process varies. On average, a trouble free trademark can be registered within five to eight months from the date of application. Difficult marks, on the other hand, would take a longer time (ie between 12 to 18 months). Costs In terms of cost, a difficult trademark, like a suggestive or descriptive trademark, often leads to higher costs because more time and effort has to be spent to overcome any objections or citations the trademark examiner may raise during the application process. Marketing The Brand On The Internet One should always consider whether an online presence is necessary. If so, it is often a good idea to register a suitable domain name as soon as possible. Due to the low cost of registering a domain name, there are many parties who register thousands of domain names waiting for interested buyers. There has been of late an upsurge in such transactions and prices of some domain names have reached six to seven figures in US dollars. page 37 of 58 pages

5 Rajah &Tann s Trademark Practice is able to provide advice on trademark matters. If a client requires advice on branding matters, we are able to recommend experienced international branding consultants and advertising agencies and work with them to formulate a comprehensive branding and trademark strategy. Our trademark experience is not limited to For more information, contact: Chris Woo Partner, itec Practice Group DID: chris.woo@rajahtann.com applications in Singapore. We are able to assist clients to file international trademark applications (commonly known as Madrid Protocol filings). We also work with many foreign trademark specialists on trademark matters. In addition, we are able to assist in acquiring domain names throughout the world. We work closely with several international domain name registrars. page 38 of 58 pages

US TRADEMARK REGISTRATION

US TRADEMARK REGISTRATION Julee L. Milham emusiclaw.com Type: Published: Last Updated: Keywords: Legal guide Intellectual property; United States; trademark; copyright; patent; logo. This document provides