A guide to trademarks

Transcription

1 A guide to trademarks

2 Contents General What are trademarks and what do they do?...1 Getting started The trademark application process...5 Keeping a trademark protected The renewals process...9 The purpose of this guide is to introduce you to the world of trademarks and to provide a basic outline of the key procedures involved. We will provide a brief overview of trademarks, including the trademark application process and the ongoing protection of your marks. Please note this guide is for reference purposes only and we recommend that you seek professional legal advice if you are considering filing a trademark application.

3 General What are trademarks and what do they do? What is Intellectual Property?...2 What is a trademark?...2 What does a trademark do?...2 What are the benefits of registering a trademark?...2 Who owns the trademark?...2 Why are trademarks beneficial?...2 What protection does registering a trademark offer?...2 How long does trademark registration last?...2 How are trademark rights enforced?...3 Are trademarks valid in every country?...3 Do trademarks have to be registered?...3 Why should I consider registering my trademark?...3 What can and cannot be registered as a trademark?...3 What is the difference between a registered and unregistered trademark?...4 What is the difference between a trademark and a service mark?...4 Can I sell my trademark?...4 What is a trademark license?...4

4 General What are trademarks and why do we need them? What is Intellectual Property? Intellectual Property (IP) refers to something unique that has been created by the mind, such as inventions; designs and symbols, and names and images. Intellectual Property rights (IPR) are protected by law and include patents, trademarks, designs and copyright protection. What is a trademark? A trademark is a mark or sign that you can use to identify your business goods or services from others. A trademark can be of your company s logo or a signature. What does a trademark do? A trademark provides protection to the owner of the mark by granting them exclusive rights to use it to identify their goods or services, or to authorize another to use it in return for payment. What are the benefits of registering a trademark? By registering for trademark protection, you will be eligible for several benefits, including: damages in some cases of infringement; the right to use the Registered ( ) symbol with your trademark; an easy process to stop others from using your brand name for domains and usernames across social networking sites; and significantly stronger protection than common law marks making it easier to recover your property Who owns the trademark? The person, company or organization that uses and registers the trademark owns it. In general the first person, company or organization to use the trademark owns it. Why are trademarks beneficial? Trademarks promote initiative and enterprise throughout the world, by giving owners recognition and the possibility of financial profit from their marks. Trademark protection also hinders the efforts of counterfeiters who use similar marks and signs to market inferior products or services. What protection does registering a trademark offer? A trademark provides protection to the owner of the mark by giving them exclusive rights to the mark to identify their goods or services, or to authorize others to use it in return for payment. The period of protection varies, but a trademark can be renewed indefinitely. How long does trademark registration last? A trademark registration lasts for 10 years provided that you file a Declaration of Use and pay the related fee between years 5 and 6, and then again between years 9 and 10. The trademark can then be renewed for a further 10 years; the trademark may be continually renewed provided that it is still being used. If the renewal fees are not paid by the renewal date the mark will expire. A guide to trademarks 2

5 General What are trademarks and why do we need them? How are trademark rights enforced? If there is sufficient evidence that someone is infringing your trademark you can take legal steps to stop this. Your trademark attorney can issue a cease and desist letter. In certain circumstances where intentional infringement occurs, trademark litigation is the only approach and this can be dealt with in both state and federal courts. Are trademarks valid in every country? A trademark registration is only protected in the country, or region in which the application has been filed and granted, in accordance with the law of that country. If you want to protect your trademark in countries other than the United States, you can apply to the trademark office in each individual country. However, European and international application systems also exist (see How do I protect my trademark abroad? ). Do trademarks have to be registered? In the US you can get common law rights just by using the trademark; the mark does not need to be registered to be recognized. In order to ensure that your trademark is legally protected and that you can bring legal action for any infringement, it is advised that you apply for a trademark. Why should I consider registering my trademark? A trademark protects your brand name and image and allows you to take legal action against anyone who uses it without your permission. It allows you to include the Registered ( ) symbol with your brand to show that it is legally yours. What can and cannot be registered as a trademark? A trademark must be unique and can include: Words Sounds Logos Colors A combination of any of these A trademark cannot: Be offensive, e.g. contain swear words Describe the goods or services it will relate to; for example cotton cannot be a trademark for a cotton textile company Be misleading Be a three-dimensional shape associated with the trademark Be too common and non-distinctive Look too similar to state symbols like flags or hallmarks A guide to trademarks 3

6 General What are trademarks and why do we need them? What is the difference between a registered and unregistered trademark? Trademarks do not necessarily have to be registered with the United States Patent and Trademark Office (USPTO). If you create a logo or name that you want to use but not register, you can attach the Trademark symbol ( ) which gives you common law rights. However trademarks that are registered have stronger legal brand protection. What is the difference between a trademark and a service mark? A trademark is a word, name, symbol or device which is used to identify the goods of a business and to distinguish them from others. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. What is a trademark license? A license is a written agreement between the owner and another party which allows them to use the trademark. The agreement defines the scope with which the third party can use the license. A trademark license does not have to be recorded in the US or UK; this varies with other countries as some require the license to be recorded in order to be effective. If you have any questions, don t hesitate to contact the Envoy team: [email protected] Toll free: envoyrenewals.com Can I sell my trademark? As a trademark is classed as Intellectual Property, it is therefore similar to any other property you may own. This means that you are free to sell your trademark at any stage if you wish to do so. A guide to trademarks 4

7 Getting started The trademark application process Who do you register a trademark with?...6 How is a trademark registration granted?...6 How do I register a trademark?...6 Can I search for trademarks that have already been registered?...6 How much does it cost to apply for a trademark application in the US?...6 What are the steps involved in applying for trademark protection?...7 How long does the trademark application process take?...7 How do I protect my trademark abroad?...7 Do I need a trademark attorney/agent to prepare and file a trademark registration?... 8 Does getting a trademark registration in one country affect its grant or refusal in another country?... 8

8 Getting started The trademark application process Who do you register a trademark with? A trademark is registered with the national trademark office. You will normally need to apply in each country that you are seeking protection in, however European and international application systems do exist. These include: European Union Trade Marks The Madrid Protocol (see How do I protect my trademark abroad?) How is a trademark registration granted? In order for a trademark to be registered an application must be filed at a national trademark office or regional body such as the European Union Intellectual Property Office (EUIPO) or World Intellectual Property Organization (WIPO) for International protection. Once the relevant searches and examinations have been carried out and the trademark application meets all the requirements of the relevant trademark office, the trademark will be registered. The first step to getting a trademark registered is filing the application. How do I register a trademark? An application for registration of a trademark must be filed with the appropriate national or regional trademark office. The application must include a graphical representation of the sign, including any colors, forms or threedimensional features. The application must also contain a list of goods or services to which the sign would apply. Can I search for trademarks that have already been registered? Yes. Trademark searches can be carried out using the trademark offices databases. You can search the databases online via the trademark offices website such as the USPTO or the UK IPO websites. How much does it cost to apply for a trademark application in the US? The cost of registering a trademark will depend on how you apply for protection. If you work with a trademark attorney or advisor they will help your through the application process and will charge a fee for this service. The cost* of submitting the trademark application to the USPTO is as follows: Application for registration, per international class: Cost Paper filing $375 Electronic filing, TEAS** $325 Electronic filing, TEAS Reduced Fee (RF) application $275 Electronic filing, TEAS Plus application $225 * Costs listed are correct at the time of publication. ** Trademark Electronic Application System All fee information is sourced from and is listed in US Dollars. Please note that there are additional requirements for TEAS RF and TEAS Plus applications over regular TEAS applications. A guide to trademarks 6

9 Getting started The trademark application process What are the steps involved in applying for trademark protection? The basic steps involved in obtaining a trademark include: 1. Confirmation check if your brand qualifies as a trademark. 2. Research search for any trademark registrations similar to yours; check if they are being used and if so to what extent. 3. Application apply to register your trademark by completing the trademark registration application either by post or online via the USPTO s Trademark Electronic Application System (TEAS) and pay the appropriate fees. 4. Examination after the application is submitted the examiner will review it and determine whether the mark may be registered. If the examiner has any objections they will issue an Office Action letter which the applicant has six months to respond to or the application will be abandoned. 5. Publication if the examiner doesn t raise any objections the mark will be published in the Official Gazette. Any person who objects to the mark has 30 days to file their objection with the USPTO. 6. Grant if no objections are received the trademark registration will be granted and a registration certificate will be issued. How long does the trademark application process take? Applications to register a trademark in the US take approximately between six months to one year to complete. Depending on proceedings this may take longer if any objections are received. How do I protect my trademark abroad? There are two options for protecting your trademark abroad. You can do this via a European Union Trademark (EUTM) or through the Madrid Protocol. EUTM if you want to protect your mark in countries that are part of the European Union (EU), you can apply for a European Union Trade Mark from the European Intellectual Property Office (EUIPO). This application can take nine to twelve months to complete. Madrid Protocol you can apply to register your trademark in countries that have signed up to an agreement called the Madrid Protocol. You apply for this through the World Intellectual Property Organization (WIPO). This application can take three to eighteen months to complete. A guide to trademarks 7

10 General What are trademarks and why do we need them? Do I need a trademark attorney/ agent to prepare and file a trademark registration? No. Applicants can prepare their trademark applications and file them without the assistance of a trademark attorney. However it is advisable to seek legal advice when drafting an application. It can also be useful to have an attorney when responding to any objections, and if you have any difficulties with the trademark prosecution process. Does getting a trademark registration in one country affect its grant or refusal in another country? Each country has the power to grant or refuse a trademark application independently determined by its own trademark office. Therefore granting or refusing a trademark in one country does not automatically mean that other countries are bound to grant or refuse the same trademark. If you have any questions, don t hesitate to contact the Envoy team: [email protected] Toll free: envoyrenewals.com A guide to trademarks 8

11 Keeping a trademark protected The renewals process How long will the trademark stay protected for?...10 Once I have a trademark registration can I add other goods or services at a later date?...10 What are trademark renewal fees?...10 Do you need to pay trademark renewal fees?...10 When are renewals due for a trademark?...10 When can I pay trademark renewal fees?...10 What if the trademark renewal fees are not paid by the renewal date?...10 How do I pay trademark renewal fees?...10 Do I need to inform the trademark office of changes to my IP right and ownership details?...11 How do I go about making changes to my IP rights?...11

12 General What are trademarks and why do we need them? How long will the trademark stay protected for? A trademark registration lasts for 10 years provided that you file a Declaration of Use form and pay the related fee between the 5 and 6 years, and then again between the 9 and 10 years. A trademark can then be renewed for a further 10 years. The trademark may be continually renewed provided that it is still being used. Once I have a trademark registration can I add other goods or services at a later date? It is not possible to extend a registration to include more goods or services after the initial application. In this case an additional application would be necessary. When you apply for registration you should advise of any likely future scope so that the application covers such extra goods and services. What are trademark renewal fees? Trademark renewal fees are payments that must be made to the trademark office in order to keep a trademark registration in force. Trademark renewals are due after 10 years and every subsequent 10 years if you want the trademark to remain protected. Do you need to pay trademark renewal fees? Non-payment of trademark renewal fees will result in the trademark expiring and the owner losing their rights to it. This means that someone else could take advantage of the trademark. When are renewals due for a trademark? Once a trademark has been registered it is protected for 10 years from the date it was issued. Registration periods vary by country, but in most it will be due for renewal every 10 years. There is no limit to how long a trademark can be registered if renewal fees continue to be paid. Canada is the exception with a registration period of 15 years. When can I pay trademark renewal fees? You can pay a trademark renewal in its 9th year; 1 year before it is due to expire; or up to 6 months afterwards. What if the trademark renewal fees are not paid by the renewal date? If an owner fails to renew a trademark on time then it will expire. You have a 6 month grace period after the renewal date to make payment, but if this is also missed the trademark will expire. You can apply for the trademark to be restored within 6 months, but there is no guarantee that it will be restored. How do I pay trademark renewal fees? There are a few different ways to pay for trademark renewal fees: Pay directly to the trademark offices in the territories where you would like to maintain protection of your trademark, paying each one individually; A guide to trademarks 10

13 Keeping a trademark protected The renewals process Use a patent and trademark renewals service provider such as Envoy who will renew your trademark and make payment to all trademark offices around the world on your behalf; or Instruct your trademark attorney to renew your trademark for you. Do I need to inform the trademark office of changes to my IP right and ownership details? Yes. If any circumstance change regarding your IP rights these need to be registered with the trademark office in order for the trademark to remain in force. Failure to do this could result in you not being able to enforce the rights should any infringement occur. How do I go about making changes to my IP rights? IP recordals can be carried out in a few ways: Complete the required forms and submit them together with the required fee to the IPO where the rights are protected Instruct a renewals service provider such as Envoy to carry out the paperwork and filing on your behalf Instruct your trademark attorney to file and pay for the recordal with the IPO It is important to note that the process of reassigning and recording IP rights is complex and if any errors are made this could affect your protection and your ability to enforce it. Any questions? If you re looking at patent or trademark renewals, feel free to get in touch for a quote. Or, if you d like to try our online renewals system, we can set up a trial account for you. Simply contact David Kennedy, Envoy CEO [email protected] Tollfree: envoyrenewals.com A guide to trademarks 11

14 Envoy International Ltd., 1603 Orrington Avenue, Suite 300 Evanston, IL 60201, USA. Tollfree: Envoy International Ltd. envoyrenewals.com Publication date: October 2015.