A UK trademark application is filed at the UK Intellectual Property Office by post, fax or most often, electronically. It includes a representation of the trademark applied for, the name and address of the applicant and a list of the goods and/or services in respect of which registration is sought. After the application has been filed, a filing receipt is issued.Next, the UK trademark application is examined. The application is examined on the following grounds: -”Relative grounds” – this is for conflict with earlier UK trademark applications or registrations, which are identical or confusingly similar, and cover overlapping or similar goods and/or services;
“Absolute grounds” – this includes an assessment of whether the trademark applied for is distinctive, descriptive or customary in the relevant trade. A monopoly right will not be granted in such terms, which should be available for all traders to use to describe or refer to their goods or services.If any examination objections are raised, the applicant or his representative will be notified and a period of time set for response.In the case of examination objection on absolute grounds, the applicant or his trademark attorney can make written submissions or conduct an oral hearing with a senior examiner. If any of these objections are maintained, the application will be refused.With regard to relative grounds examination objection, again, the applicant or his trademark attorney has the opportunity for discussion with the examiner. If the examiner maintains any of these objections, he will send notification of the later application to the owner of the earlier UK trademark applications or registrations located, in order that opposition can be filed, if the trademark owner is concerned. The opposition period lasts for two months. Opposition can be filed on various grounds including: -lack of distinctive character;
that the trademark applied for is identical with an earlier trademark and for identical goods or services as the earlier mark;
that the trademark applied for is identical with an earlier trademark and for similar goods or services as the earlier mark;
that the trademark applied for is similar to an earlier trademark and for identical or similar goods or services as the earlier mark;
that the trademark applied for is identical or similar to an earlier trademark which has a reputation;
that the trademark applied for contravenes the law of Passing Off, which protects unregistered trademarks; and/or
that the trademark applied for contravenes copyright, design right or registered designs.The opposition rate against a UK trademark application is quite low, presently about 5% of all applications published.If no opposition is filed, the application will be registered and a registration certificate issued. A UK trademark registration remains in force for ten years and can be renewed for subsequent ten yearly periods.
Although the importance of protecting your invention through the patent process has been stressed time after time here at Idea Marketplace the ultimate goal of many inventors is to eventually market their patented invention, and this requires a general understanding of trademark law. Indeed, the protection of an established trademark to help market your invention can be as important as the initial step of protecting your invention via a patent.A trademark is any identifying features used to designate the source of a product or service. A trademark can be a name, a logo, a design, or anything else used by consumers to identify a particular product.Trademarks have their origin in medieval England, where craftsmen would stamp their mark on their craft to identify their goods to consumers. Their stamp stood for the quality that consumers expected from goods bearing that particular mark. Their reputation depended on the integrity of the mark. The English Common Law protected the craftsmen from disreputable merchants who might have tried to confuse consumers by stamping the craftsman’s mark on their own products.Today, trademarks are also used to distinguish the source of goods. When consumers buy a package of film with a label that says “Kodak” they know that the film will be of the same quality as the film they purchased previously which had the “Kodak” label. Trademarks protect consumer expectations.One develops trademark rights in a distinctive name by using that name in conjunction with a good or service. When you come up with a distinctive name for a product and then introduce it into commerce, you develop trademark rights in that name. However, the name will not receive protection if it is generic or descriptive. For example, while the names “Vaseline” and “Kleenex” were once protected trademarks, they have become such generic terms for “petroleum jelly” and “tissues” that they are no longer protectable trademarks. Furthermore, a name will not receive protection if it is merely descriptive, such as the name “red licorice”.As you can see, the broadest protection can be obtained by staying away from words which might be deemed descriptive or generic, and by instead trying to use words which are “arbitrary” or “coined”. The more distinctive the name, the greater the protection that trademark is given. For example, if you operate a photocopy store called “Impact Copiers”, this is likely to receive broad trademark protection because it is “arbitrary” (the word “impact” generally has nothing to do with the photocopying business). If you were to call your copy shop “Gnarf Copiers” this would also likely receive the broadest protection since it is a “coined” term (the word “Gnarf” was made up by you and is not a word in common usage).By simply using a permissible type of name in business or trade, you will automatically develop state “common law” trademark rights. Even though common law trademark rights come into existence simply by using the mark in commerce, you might also wish to register your trademark in the United States Patent and Trademark Office (PTO). Registering a trademark gives it nationwide effect. While your “common law” trademark rights will prevent your competitors from using your trademark in geographical areas where you have been selling your products bearing the mark, a registered trademark will provide protection across the entire United States.A trademark qualifies to be registered federally in the PTO as long as the mark is used across state lines. A great advantage of going this route rather then relying simply on state common law protection is that you can use the federal courts to enforce your trademark. If a mark is properly registered, it creates a presumption in court that the registered owner has the exclusive right to use that mark. This will make it much easier for the holder of a federally registered trademark to prevail in the event that he or she sues or is sued for trademark infringement. Also, you can record your registered trademark with the U.S. Customs Agency, and they will stop any unauthorized products bearing your trademark from entering the United States.For a new business, it is important to perform a trademark search of your intended business and product names. First, it will help determine if your name is protectable. Second, it will help determine if your intended business or product name might infringe someone else’s trademark. You should not, however, that even if the mark is not identical to another registered mark, there might still be infringement if your mark creates a “likelihood of confusion” with the other mark. If you conduct your trademark search at an early point, you might avoid further investment in a problematic trade name, and avoid a potentially costly legal problem.
Want to register a trademark? Trademark registration needs awareness of the procedures and law, so it is very much essential that you hire an attorney who has extensive expertise. Choose an attorney who offers individual attention to your trademark matters, including every facet of trademark searching and filing.To begin your search for an attorney, never choose one based only upon a lawyer referral service or advertising. Usually, lawyer referral services may not evaluate abilities of an attorney in their listings. Few people use advertising services to find a trademark attorney, but this is also a poor method of finding.The attorney you find should be well educated in trademark law and has extensive experience in giving trademark services. Better to search for graduates of law schools that are renowned for their programs on intellectual property. Finding a good lawyer can help you with several facets of filing a trademark and services, such as:1. A trademark attorney will help you when finding a trademark slogan or a product name trademark. Simply, the lawyer orders a report of your trademark search. Then he/she counsels you on the outcomes of trademark search and explains you whether it is secure to continue with using the planned mark. During the counseling, you can ask questions like: how to obtain a trademark, what the cost of registering, and how to trademark a slogan or a logo.2. Then the attorney helps you in drafting your trademark application. Make sure the lawyer pays special attention on the report of the product like services and goods. How the attorney drafts this can greatly influence how most likely you are for registering a trademark.3. The lawyer helps you in ensuring that the trademark application form is thorough, such as the attorney should evaluate the sample and the drawing page to verify that they assure the needs of USPTO. The case may vary slightly based on whether the mark is a slogan, logo or product name.4. The attorney must be capable to deal with the USPTO to resolve if any objections with the trademark application. Also the lawyer should mention briefs, which deal with any primary objections to register your trademark.5. Overall, the lawyer should be able to guide you on all aspects of trademark registering and filing. Also he/she will help you in handling the situation like getting a cease or a desist notice. This notice will occur when the party thinks their trademark has been violated upon. This notice will be assessed by an attorney who may give you with trademark advice.
According to the US Patents and Trademarks Office (USPTO), the number of active trademark registrations has gone up by approximately 80,000 from 2009 to 2010. With more and more business identities seeking protection for their intellectual property rights, trademark lawyers are very much in business. Not only can proficient trademark lawyers help you through the registration process, they can provide suitable pre registration guidance as well. For example, if you are still contemplating on the trademark nomenclature, trademark lawyers could provide valuable inputs for the same.Understanding Trademarks with Trademark Lawyers
Your trademark lawyers would be the right people to explain the various categories of marks commonly used, and the ones preferred for trouble free registration. For some basic definitions, given below are the types of trademarks:Descriptive Marks: These are the ones which describe the products or services offered. For example, something like “honey coated flakes” would be a descriptive trademark. Normally, trademark lawyers could advice you against these, because one descriptive trademark could bear similarities with various others catering to the same product category. However, entrepreneurs are sometimes prepared to brave the difficulties because of the advertising advantages associated with such descriptive connotations.Suggestive Marks: Suggestive trademarks are the ones which make an indirect reference to the products and services. For example, something like “Quick Bites” could be used for a snacking item, “Jaguar” for an automobile brand, “Leg Ins” for an apparel manufacturing company and so on. These are more preferred choices with respect to uniqueness when compared to descriptive marks.Arbitrary Marks: Arbitrary trademarks could be highly preferred for protection purposes. These are commonly used English words which can be used for unrelated products. For example, “Apple” for computers is what an arbitrary trademark is. However, the concept would change with respect to the products they represent. For example, the mark “apple” when used for a fruit exporter, would become a descriptive trademark.Obscure and Fanciful: These trademarks would provide for the maximum possible protection since they are basically unique words which have no meaning. They are created by business entrepreneurs and the brand becomes their identity. Classic examples of fanciful trademarks would be “Xerox” and “Oreo”. While the former has nothing to do with photocopying, the latter is completely unrelated to the biscuits it is a trademark for. However, they have gone on to become generic terms replacing the actual products in the process.Once you have your trademark type in place, you can go ahead and register it as per the required process with the help of trademark lawyers.
A good trademark application is essential to protect ones trademark. Your mark is a vital aspect of virtually any good brand name. And as a result, the trademark form submission is vital in order to register your primary mark with our national government and supply it greatest the statutory protection possible. In truth, without government trademark registration, your usage of your current mark could possibly be restricted to a compact geographic region or perhaps few products and services. A trademark differs from a brand name for the reason that ones brand symbolizes a lot more than only a mark. In general, your brand can be quite the same as a competitor’s, but recognized easily enough through your mark. You may not file a trademark application for the brand, simply for certain elements of the brand that could be covered by trademark regulation.Regarding a brand name ID, you can consider your quality of service, appearance and feel of your company setting, corporate customs, color schemes, decor, online strategy as well as other elements in generating your brand. You may even choose to design the identity of the brand after another prosperous business. If perhaps that you happen to be opening a new fast food eatery for example, you might like to build a picture of uniformity and speed and employ restaurant favorable colorings like reddish and yellow. Do a comparison of this particular design to those of Carl’s junior, Wendy’s, and White castle. These companies all use a very similar all round business appearance to compete and also be successful inside their sector.Having said that, it is best to identify your current brand and avoid confusion and identify yourself in the industry. This is where a trademark or service mark can start to play an integral purpose as part of your business as being a sometimes essential element of your general marketing approach. As a result, making a new trademark request to register your current trademark or service mark is a crucial key to look at. There are several ways in which a new trademark registration might help you. To start with, application and registration offers constructive notice to the common public as well as indexing inside the national repository. This specific purpose alone is sufficient motivation for the purpose of registration of your mark, since it will dissuade a lot of people from picking a infringing brand name and therefore causing long run conflicts. If you haven’t got registration, it is rather more complicated for people to find your trademark among all of the masses of various other organizations. As another advantage, registration will provide you with a legal presumption of ownership for the reason that mark ended up being analyzed and accepted with a federal examiner.What’s more, federal registration for a company’s trademark enhances the capability for collection of punitive compensation and lawyer or attorney costs in the event that any trademark is violated by other people. Additionally, federal registration prevents a person from coming across geographic constraints to your current state or location through developing your privilege to be able to employ your trademark across America with the particular interconnected services or products. A registered trademark presents a person better ability to file a suit regarding infraction within the court of personal preference, such as federal court. Having a registered trademark allows a person the actual potential to employ US customs to be able to restrict importing of violating goods coming from overseas. Federal registration allows a company to make use of the U.S. federal government trademark registration to acquire registration and proper protection in overseas nations.Registration can make it achievable for your mark to become incontestable as a good legitimate registered U.S. mark after five-years. And also, national registration for the word mark boosts internet website phrase security with respect to internet website holders because of more policing programs supplied from web address registrars. In other words, you are usually far better able to prevent other people from domain stealing with respect to your trademark or using your business own reputation and trademark inside some sort of website name to publicize competing products.And finally, national registration of a new name presents you increased potential safeguard by search engines because of some other companies employing ones trademark with regard to advertising.
If you own or operate your own business then you may be getting recommendations to get trademarked. A trademark will help protect the name of your company or the name of any products you have or slogans you may use, so no one else can use them. This will prevent a company from coming in and using these names and confusing your customers. To get a trademark it is recommended that you use a trademark.There are many different businesses all over the country that will decide to use the services of a trademark attorney. A trademark attorney is responsible for helping companies defend their trademarked name in court and helping companies apply for a trademark in the first place.There are a few basic services that trademark attorneys will provide including helping clients determine if their name or slogan has already been trademarked. This is why it is so important that anyone who has their own business or product visits a trademark immediately so that they can determine if the name they are using has been trademarked or not. If the name or slogan you are using for your company has already been trademarked you could be facing legal issues if you aren’t careful.Another important thing that trademark will do for their clients is they can help them to get the necessary protection that they need on their name so that someone else doesn’t come around and use it without their permission and confuse customers. There are many reasons why you may want to turn to a trademark attorney, but there are many people who do not know attorneys and will need to find a new attorney to help them with this process. When it comes to finding a lawyer to help you with trademark issues, not just any lawyer will do, you will want to make sure that you find one who is specifically trained in trademark law.Even if you know a general attorney you shouldn’t hire one to help you with trademarking, they should be a trained attorney. This is the best way to make sure that you will be getting the type of help that you need with your trademark and that the person you are trusting knows the process well. A trademark attorney will have passed a special trademark bar exam and will have specific training in trademark law. This means they will have the knowledge and training necessary to give you the best help possible with your case.When it comes to getting help with the reputation and future of your business, it is always important to take great care when hiring someone to represent your company. This is why you should take care when choosing an attorney to make sure you’re hiring the right one.
The trademark process is often touted as being fairly simple. In many ways, it is. The biggest issue you have to confront is decision making. For that, there is no simple answer and, as is often the case, the wrong decision can lead to very unfortunate results. In this article, we take a look at what trademark classes are and how to go about picking the appropriate ones for your situation.The class system can be a scary subject at first. The name alone can have this impact considering it is officially known as “International Classification of Goods and Services.” It just sounds like a bureaucrats perfect dream, eh? Well, the good news is it isn’t overly difficult.A good place to start with this is to realize the purpose. There are many hundreds of thousands of registered marks with the Patent & Trademark Office. How do you go about organizing them? You divide them into classifications, better known as “classes”. There are 45 total classes. 34 are devoted to products while the remaining 11 are devoted to services. As you can see, this would suggest there are far more products being marked than services.There is somewhat of an art to figuring out what class you should register for or, in some cases, whether there are multiple classes you should pursue. For instance, there is a class for textiles such as cotton. If that textile is then made part of another product in a different class, such as if you use the cotton to make a shirt, what class does it fit in? In this case, the answer is under the clothing class because the cotton was converted into the new product. If you had to trademark the final product AND the original raw materials, this area of the law would be even more confusing than it already is!So, how do you figure all this out? Cheat! Let the Patent & Trademark Office do it for you. Go to their site and do a search for “Acceptable Identification of Goods and Services Manual”. A page should come up that let’s you do a search. Put in the subject matter of your product or service, to wit, sunglasses, web design, etc. Push the magic button and the program will return a suggested class for you. Make sure to put “and” between any two words. The results are usually spot on, but you cannot rely on them legally.If you have some unique product or service that doesn’t seem to fit, hire an attorney. Making a mistake with your class designation can render your trademark worthless. That can be a real disaster when you spend five years and untold money marketing it.
All goods or services are categorized within International Classes (IC hereafter). Goods run from classes IC 1-34, while Services are in IC 35-45. Let’s take a closer look at a group of these trademark classes – classes 32 & 33.What are International Classes 32 & 33 All About?These 2 classes represent the beverage classifications for trademarks. Class 32 is light beverages and has about 186 possible descriptions; class 33 is wines and spirits & has about 130 possible descriptions.Almost any non-alcoholic beverage is in IC 32 except beer, which is in IC 32. This class includes waters, juices, sodas as well as syrups and essences used in making non-alcoholic beverages.IC 33 is going to be any type of liquor, wine or spirit. Also included are syrups and essences using in making alcoholic beverages.Geographical Indications for Wines & SpiritsWines and spirits get a special little section of their own in the Trademark Manual of Examining Procedure and it’s all about location, location, location. When a geographic name is used as part of a name for wine or spirits, the USPTO has all kinds of things to say about that. Let’s break it down by what they say and what that means:Geographical Indications Used on Wines and Spirits That Do Not Originate in the Named Place”Geographical indications” are defined…as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.” … Obscure areas or those that do not have a reputation or other characteristics generally associated with wines or spirits should not be prohibited from registration.Clear as a bell, eh? Basically this means that USPTO will refuse a mark that contains a place name if (1) the place is known for that particular good (e.g. Champagne, France as cited in the refusal against Champagne from Spain AND (2) your goods do not originate from that place, as in the champagne example.There is an exception and that’s for obscure areas or for areas that don’t necessarily have a reputation for wine or spirits, such as with Tropical Liqueurs of Florida.Geographical Indications Used on Wines and Spirits That Originate in the Named PlaceThis one’s a bit easier to understand. Here’s what the USPTO says:”If the wines or spirits originate in the identified place, and the primary significance of the mark is a generally known geographic location, the examining attorney should presume the requisite goods/place association, and refuse the mark under §2(e)(2) as geographically descriptive, or require disclaimer of the geographic term, as appropriate.”This is talking about wines or spirits that do originate in a known geographic location and the above has a two-fold explanation.First, if the ENTIRE mark is the name of the place, the USPTO will refuse it on the grounds that it’s descriptive, as they did with Shampagne. As you can see in this case, even an alternate spelling does not bypass the descriptive refusal.Second, if a PORTION of the mark is the name of the place, the USTPO will require a disclaimer of that portion, as they did with Bialla Napa Valley.
Whenever a business successfully builds a positive reputation in the marketplace and establishes a solid client base, there is always the potential for trademark infringement to become a problem. Competitors may attempt to use names, phrases, designs and colour schemes which are similar to your own in order to lure away your customers by causing them to mistakenly associate your positive reputation with the product or service which they are providing.This is particularly the case in the online world, where branding is extremely important. Most people find what they are looking for online by typing a search term into a search engine’s web page and then following the links to relevant websites which the search engine returns. But how does the law of trademark infringement apply to the sponsored links, such as Google AdWords?What is Google AdWords
AdWords is a service which Google offers under which business can pay to “sponsor” a word. When this word is typed into Google, links to businesses which have sponsored that word appear prominently on the right hand side of the web page. So for example, an electrical goods company might sponsor the phrase “Cheap TV” and whenever someone searches for this phrase the company’s advert will appear at the right hand side of the page. The contentious issue here is that Google will allow businesses to sponsor AdWords which are also the brand names or trade marks of competitors.What is the law?
In July 2010 the European Court of Justice issued guidance on the circumstances in which one company may use a trademark of another company as an ad-word when delivering its judgment in the case of Portakabin Limited and Portakabin BV v Primakabin BV.In this case Primakabin and Portakabin were rivals which manufactured the same line of products (portable accommodation/storage units). Primakabin had purchased the ad-word “portakabin” from Google, together with common mis-spellings of this word. This meant that whenever anyone typed “portakabin” into Google, they would see an advert for Primakabin’s products at the top-right of the screen. Portakabin sued, claiming that Primakabin were infringing on its trademark.What about Google’s liability for trademark infringement?
The European Court of Justice decided that in cases where one company purchases an ad-word which is also a trademark of a competitor, there is not a trademark infringement as long as the advert makes it clear that there is no commercial connection between the company placing the advert and the company which owns the trademark. The issue which any court must consider is whether there is a likelihood that anyone who saw the advert after typing in a search term would be confused as to the origin of the goods or services which are advertisedThe case also clarified that it is possible for a company to infringe on its competitors intellectual property rights by purchasing and using AdWords which are mis-spellings of the competitor’s trademark. In these cases the advertiser has the same duty to make it clear that it is not commercially connected with the company which owns the trademark.What about Google’s liability for trademark infringement?
The issue of Google’s liability for trademark infringement by advertisers or service users who host content online has already been addressed by the European Court of Justice in the case of Google France v Louis Vuitton. The Court decided that Google is not liable for trademark infringements which are perpetrated by users of its services as long as it takes steps to remove any content which infringes on another party’s intellectual property rights as soon as is reasonably practicable after it has been informed of the infringement.
Courts throughout the United States have been at odds regarding the issue of whether or not a party’s purchasing of a trademarked keyword to trigger sponsored links constitutes a trademark use within the meaning of the Lanham Act. In particular, the 2nd Circuit had consistently held that the purchase of a competitor’s trademark to trigger Internet advertising did not constitute a use for the purposes of the Lanham Act. The 2nd Circuit apparently stood alone in that no cause of action for trademark infringement would be possible in such situations. However, it appears that the 2nd Circuit is now joining the findings of other circuit courts within the United States. In particular, the growing sentiment is that the purchase of trademarked keywords that trigger sponsored links on search result pages, whether it be Google, Yahoo or MSN, or any others, is in fact a use under the Lanham Act.While courts had apparently agreed that displaying a trademark term within the text or header of a sponsored link advertisement was indeed trademark use, numerous decisions indicated that the mere purchase of a trademarked keyword was not enough to establish trademark infringement or other trademark related liability. While not every circuit court has addressed the issue, the influential 2nd Circuit appears to be joining the other circuit courts to make it more likely than not that when a trademarked keyword is purchased in order to advertise the sale of goods or services, such action qualifies as a use in commerce and falls within the purview of the Lanham Act.Having satisfied this threshold issue, the issue will now become whether a likelihood of confusion, the test to be applied under a trademark infringement analysis, is satisfied. Practically speaking, a motion to dismiss for failure to state a claim will likely fail and timely and costly litigation in order to address all facts pertinent to the likelihood of confusion analysis will be necessary.Purchasers of keywords should take notice of the current state of the law and be prepared to act accordingly. In addition, trademark owners should be diligent in monitoring their trademarks, identifying unauthorized uses which now appear to include the purchasing of keywords for that trademark, and acting swiftly in order to protect and retain trademark rights.