IPFoundations: What Are the Steps Associated with Getting a Trademark?

What Are the Steps Associated with Getting a Trademark?

Pick a Mark

In general, choose:

Invented or coined words:
- These are strong trademarks because they don’t have any prior associations among consumers. Ideally, in international markets, the mark should have no meaning in any known language.
- Included in this category are such trademarks as Exxon and Kodak.
Arbitrary marks:
- These are also strong marks in that they are common words but are used in association with incongruous products or services.
- For example, Arctic for pineapples, Apple for computers and Polar for pens.
Suggestive marks:
- A word or mark that, when used with products or services, requires imagination to arrive at a conclusion about the nature of the product.
- For example, Uber, which means super in German, as used in association with ride-sharing services, is a suggestive trademark

In general, avoid:

Descriptive marks that convey information about the product or service (such as an ingredient, a quality, characteristic, function, feature, purpose, or use of the product or service).
- For example, Super or A1.
Words that describe the product or service:
- For example, Shredded Wheat for cereal that consists of shredded wheat.
Words that have undesirable meanings in countries where you want to do business:
- For example, Nova as a mark for a car might be a problem in a Spanish-speaking country because when you emphasize the last syllable, the word means “it won’t go,” which would, for obvious reasons, make the car an undesirable purchase.

When it comes to picking a trademark, is anything prohibited?

Yes, some signs or symbols are prohibited from becoming trademarks for public policy reasons. For example, most countries will exclude their national symbols as well as international symbols such as a red cross or a red crescent.

CLEARING THE MARK

Before you decide to use a trademark in conjunction with your goods or services, you must clear it in each jurisdiction in which you want to carry on business.

In other words, you need to determine if there is an existing trademark that is the same or confusingly similar to yours in association with the same or related goods or services. If this is the case, you will likely be prevented from using your trademark, unless you can invalidate the existing trademark or license it for your own use.
You should conduct a thorough trademark search for every jurisdiction that you might want to enter.

How do you conduct a search?

You can begin the process by performing informal searches through the various IP offices (IPOs) around the world to see if there are applications pending or existing registrations of the same or confusing trademarks to the one you want to use.
To search for existing unregistered trademarks in jurisdictions that recognize them, business directories or browser searchers can provide some information, and some national and multinational IPOs may offer services to assist.
However, you may ultimately want to retain a professional trademark search consultant and/or a trademark lawyer to conduct a thorough search and give you an opinion as to whether you have a valid trademark that you can use in your chosen countries.

Example

globe Two university computer software students developed an app for the Android platform. Very excited about the commercial possibilities of this product, they quickly established a business around the app. One of their first priorities was to pick a catchy name for the product.

They selected Doogle and became quite attached to the name. They applauded their cleverness for picking a name that was close to internet giant Google but not an exact duplicate (which they knew would not be permitted). They began to market their app under the brand name Doogle and invested a substantial sum in their marketing strategy, including developing a website and a promotional video. These marketing costs represented a fairly significant portion of their limited budget.

What was the issue with their approach?

Upon obtaining legal advice, they were advised that Doogle for an app may be confused with Google for online services and that they were likely precluded from using their name because Google was registered prior to their use of Doogle.

In light of this issue, what did they have to do?

They changed their app’s name. Had they initially tailored their selection of their brand name to the requirements of trademark law, they would have saved themselves stress and costs down the road.

REGISTER YOUR TRADEMARK

In common law countries such as Australia, Canada, the United Kingdom and the United States, registration is not required for you to acquire trademark rights. These countries recognize both unregistered and registered rights, however, not all countries do so. Some countries only recognize trademark rights upon registration.

For European countries, you can register in each country, or you can opt for a European Community trademark registration for Europe as a whole, which simplifies the application process to just one filing.

You can learn more about the European Community trademark by visiting the Office for Harmonization in the Internal Market (Trade Marks and Designs).

Why register if you don’t have to in some countries?

Unregistered trademark rights extend only to the geographic area in which consumer goodwill has been acquired through use. In contrast, registration confers countrywide rights (even if you are only using your trademark in one small area of the country). It also provides notice of your trademark rights in each jurisdiction in which you register.

Last modified: Friday, 4 September 2020, 11:56 AM