You protect a trademark by registering the trademark. Historically, the registration process began with the filing of a trademark application at the Trademark Office in each country (and/or state) where you desire the protection afforded by a registered trademark.
Modernly, the filing of trademark applications has been streamlined by two important changes in the law, at least if your interest is in protecting your trademark on an international basis.
First, while trademarks have historically been obtained on a country by country basis, trademarks in Europe can be registered on a supra-national basis by seeking to register a trademark with the European Community Trademarks Office. Actually, the Europeans chose to give their trademarks office a completely different (and not a particularly informative, but doubtlessly politically correct) name: Office for Harmonization of the Internal Market or "OHIM" for short. There are a number of advantages in using OHIM to register marks throughout the European Union (EU), not the least of which is that it is far less expensive to use OMIH than it is to file trademark applications through each of a number of different national trademark offices. A disadvantage of using OHIM is that the European Economic Community is not a member of the Madrid Agreement, which takes us to the second point.
The second point relates to the adoption by the United States of the Madrid Agreement and the Madrid Protocol. Under the Madrid Agreement and Protocol, a US trademark applicant, may file a single trademark application with the United States Patent and Trademark Office and have that application serve as a basis for an International registration which may be extended for the same goods/services to other member states designated by the applicant. Unfortunately, as indicated above, the European Economic Community is not a member of the Madrid Agreement and Protocol (although the individual members of the EU are also members of Madrid).
The Madrid Agreement and Protocol as well as the Community Trademark are discussed in more detail later in this article.
If the focus of your business activities are exclusively in the United States, then perhaps you will be satisfied with a trademark registration exclusively in the United States. But the issue does not end there as it is possible to protect a trademark on a state by state basis or on a federal or nationwide basis. It is probably safe to say that most trademarks are protected in the United States at the federal level, there can be certain advantages in seeking registrations at the state level.
Deciding where to register your trademark is a complex issue and you will be well advised to hire a trademark lawyer to assist you in this process. If you wish, you can contact one of our offices and talk to us about the services which we offer. Or you can find a trademark lawyer in the telephone book or through various bar associations. But, before you have a lawyer start the trademark registration process, you will want to take steps to select a viable trademark, that is, you want to make sure that your proposed trademark is both distinctive and available for use.
As you might well imagine, registering a trademark in every possible country is an expensive proposition. Indeed, many trademarks are registered only in selected countries for any one of several possible reasons:
2. the owner of the mark does not have the economic resources to protect the mark everywhere;
3. the market for a particular product or service is so small in some countries that it does not justify seeking trademark protection there; or
4. the product or service in question is sold under different marks in different countries.
While the United States recently adopted the Madrid Agreement and Protocol, this occurred only after years of opposition and it is to be noted that the Madrid agreement and Protocol only became effective in the United States in November 2003. The Madrid Agreement and Protocol is really two different treaties. The Madrid Agreement came first, but was ratified by only a limited number of countries due to certain perceived deficiencies. There were efforts made to "fix" the perceived deficiencies in the Madrid Agreement and the current proposal is embodied in a Protocol to the Madrid Agreement that was recently adopted by the United States. Many of the other present non-member countries may ultimately join the Protocol-modified Madrid Agreement.
In order to take advantage of the Madrid Agreement and Protocol, a company or individual must be from a Madrid member country. The company or individual can seek an International Trademark registration. However, an International Trademark registration does not immediately result in a trademark registration that is enforceable everywhere. Rather, individual countries must be designated in the resulting International Registration with an additional cost being incurred for each country designated. Also, a number of the individual countries can (and do) issue official actions, and/or allow objections to be filed by third parties, to which responses must be filed by a local trademark agent or attorney. Thus, while there can be a substantial cost benefit to using the Madrid Agreement and Protocol filing mechanism, that cost benefit can be illusory if objections are encountered in many of the designated countries. As a result, the cost of protecting a trademark internationally can still be substantial under the Madrid Agreement and Protocol.
In contrast to the Madrid Agreement and Protocol, the filing of a single trademark application for a Community Trademark can result in a single trademark registration enforceable throughout the EU. The cost advantage of filing for (and renewing) a Community Trademark is substantial compared to filing for (and renewing) trademark registrations in the individual countries making up the EU. Also, the use of a registered trademark in one EU country will satisfy the use requirements in all EU countries in the case of Community Trademarks.
Once you decide to proceed with the registration process in the countries of interest, certain forms must be completed and official fees paid. If the trademark includes a logo or design elements, a formal drawing depicting the trademark must also be filed. The trademark application identifies the goods and/or services for which you are seeking trademark protection. The application is then reviewed by a government official, who is typically called a Trademark Examiner. The Examiner may refuse or object to registration of your trademark for a number of reasons. It is the job of your trademark attorney to convince the trademark Examiner that your trademark should indeed be registered in accordance with the laws of the country concerned. This process typically takes between one and three years (and in some countries considerably longer), and generally culminates with the publication of your trademark in a government periodical, published for the purpose of allowing third parties to contest the registration of your trademark by filing either an opposition or a cancellation action. If no third party contests your application or after an opposition is successfully resolved, your trademark will then be registered, thereby providing you with the exclusive right to use that trademark (and similar trademarks) in that country with respect to the goods and/or services designated in the registration (including closely related goods and/or services).
Renewing Trademark Registrations and Use Requirements
Unlike patents, trademark registrations can last forever but need be renewed periodically by the filing of trademark renewal applications. Generally, the duration of each trademark registration (and each subsequent renewal) is ten years. However, most countries require that trademarks be used in order to be maintained and, in addition, they have laws which allow third parties to seek cancellation of registrations for trademarks which have not been used for a certain period of time (often after two to five years of non use). When applications to renew trademark registrations are filed, some countries, including the United States, will require that you submit evidence that the mark is in use. Also, some countries, including the United States, require that evidence of use be submitted at other times as well.
Trademark Marking and Usage
Trademarks must also be properly marked and properly used. Prior to registration, trademarks should be marked and indicated as a trademark by use of the letters "TM". After registration, this symbol should be changed to indicate that the mark is registered by use of the registration symbol (®) in the United States. Use of the trademark registration symbol (®) in the United States prior to securing a United States trademark registration is illegal. Furthermore, using the letters "TM" on a term which turns out not to be your trademark can prove dangerous. As such, you are well advised to retain the services of a trademark lawyer before starting use (and marking) of a proposed trademark to help ensure that your proposed trademark is viable, i.e., it is both distinctive and available for use.
Often, companies in labeling products or in brochures correctly use their trademarks either within quotes or all in capital letters. In addition, it is imperative that trademarks be used in advertising copy as adjectives, never as nouns or verbs. Improper use of a trademark, or allowing others to use your trademark improperly, can result in the trademark becoming generic and open to use by others in the public domain. Trademarks can enter the public domain by other means as well. Examples of generic terms in the United States which were once protectable trademarks in the United States are "aspirin," "escalator" and "cellophane."
Reasons for Registering a Trademark:
Fend Off Other Parties - Trademarks can be misappropriated innocently by coincidence, or intentionally, by competitors, distributors, or professional trademark pirates. Trademark pirates can learn about new and upcoming trademarks by attending trade shows and watching the media and thereafter seeking to register these trademarks in strategic foreign countries. They hope to sell these trademarks at a handsome profit to the companies which introduced the trademark. If you register first, you not only foil the trademark pirate, you also make it easier for other parties to determine that the trademark is already protected when they do a trademark search on a new trademark that they are considering using.
Prevent Trademark Dilution - Another important reason to register trademarks is to prevent what is known as "dilution". Dilution occurs when a number of companies use similar trademarks on similar goods. Potential purchasers are then exposed to numerous trademarks that have certain similarities as to these related goods, and this minimizes the legal and practical value of a trademark as a source identifier. Other companies are much less likely to adopt a trademark which is similar to or identical to your trademark if you have taken the necessary steps to register it. If you do not register your trademark, it is much more difficult for other parties to become aware of your interest in the trademark.
Potential Loss of Goodwill - Another danger is the loss of good will which can arise by an infringing product or service of poor quality. This can happen when someone else enters the marketplace and commences the sale of goods or services with the same or a similar mark. If those goods or services are of poor quality, purchasers may well associate the poor quality item with your company, resulting in your loss of good will and sales. However, this is less likely to occur if you register your trademarks, since many companies take steps to avoid infringing a trademark of which they are aware.
Defensive Registrations - Trademarks can also be registered in nearly all countries in the world outside the United States as a defensive measure. In those countries, a company or individual need not use its trademark prior to obtaining a registration. Therefore, even in potential markets, you can prevent a third party from registering or using a trademark if you are the first party to obtain a registration. By obtaining a registration in advance of your use, you can be virtually assured of the unfettered ability to exclusively use your trademark in that country provided you begin use before the registration is subject to cancellation for non use.
Licensing the Trademark - Another reason for registering trademarks is the monetary value of a trademark registration per se. Besides being a property right which can be sold or collateralized, a trademark can be licensed. Quite often, companies enjoy substantial revenue in royalties from licensing their trademarks. If a trademark is licensed, however, it is very important, not only to register the trademark, but also to record the license agreements, where possible. License agreements must be carefully drafted to assure quality control of the licensed products and/or services by the trademark owner. A trademark license should be reviewed by an attorney who is knowledgeable in these matters, since the improper drafting or enforcement of a license agreement or the failure to record a license agreement can result in the invalidity of the trademark.