- Valuable Asset – The most important reason to register your trademark is to preserve your rights in this valuable asset. In many countries of the world, even though you have created a trademark and are using the trademark, if you do not register that trademark, you have no rights in it. A third party can misappropriate “your” trademark and obtain ownership rights by registering before you do. Although there are many other countries, in addition to the United States, which provide certain rights to mere trademark users (i.e., common law rights that commence as of first use), asserting trademark rights based on mere use of a trademark is expensive and time consuming, not to mention the fact that you may fail if your usage is not sufficiently notorious. Thus, a trademark registration is a valuable asset for use in asserting your trademark rights against other parties. Furthermore, since a trademark registration is viewed as an asset, it can be used to collateralize a loan or it can often be sold to a third party.
- 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.
Archive for the ‘International’ Category
Reasons for Registering a Trademark both with the USPTO & Internationally
Friday, June 25th, 2010Indication of Origin?
Wednesday, April 30th, 2008Three islanders from Lesbos — home of the ancient poet Sappho, who praised love between women — have taken a gay rights group to court for using the word lesbian in its name.
One of the plaintiffs said Wednesday that the name of the association, Homosexual and Lesbian Community of Greece, “insults the identity” of the people of Lesbos, who are also known as Lesbians.
“My sister can’t say she is a Lesbian,” said Dimitris Lambrou. “Our geographical designation has been usurped by certain ladies who have no connection whatsoever with Lesbos,” he said.
The three plaintiffs are seeking to have the group barred from using “lesbian” in its name and filed a lawsuit on April 10. The other two plaintiffs are women.
2007 a Record Year
Sunday, March 2nd, 2008According to the World Intellectual Property Organization (WIPO), 2007 was a record year for international trademark filings. According to the organization, 39,945 international trademark applications were filed in 2007.
Applicants from Germany, for the 15th consecutive year, led the list of top filers, followed by users in France, the United States of America (USA) and the European Community (EC). China remained the most designated country in international trademark applications reflecting increasing levels of trading activity by foreign companies in China.
Filings from U.S.-based applicants increased by 18.8% (9.4% of all filings) – making the U.S. the third top filer of WIPO applications in 2007.
Top country filers were:
1. Germany
2. France
3. U.S.A.
4. Italy
5. Switzerland
6. Benelux
7. China
8. U.K.
French Skiing Trademarks
Sunday, March 2nd, 2008This judgment comes from the Grenoble (France) civil appeals court. So, this article has meaning since I spent a good deal of time in Grenoble in the 1990s.
The trademarks “Écoles de ski internationale” and “ESI snowboard award école de ski internationale” were registered in 1994 by Michel Vachez an independent ski instructor based at l’Alpe-d’Huez. Mr. Vachez created the first ski school independent of the Ecole de Ski Francais (ESF) in 1974.
SIMS was a federation which changed its structure to a union in 2001. Mr. Vachez disagreed with the changes made at SIMS and demanded that the organization cease using his trademarks. It did not. The Grenoble civil appeals court ruled in favor of Mr. Vachez.
The judgment will mean that other independent ski schools will have to change their brochures, update websites and even alter the medals they award. The SIMS has 1700 instructors in 84 ski schools in France.
CTM Changes
Monday, February 25th, 2008There are some recent changes to CTM and UK trademark law.
For CTM applications filed after 10 March 2008, CTM searches will be optional. The CTM Register report will continue to be issued for all applications filed after 10 March 2008; however, separate individual searches will only be conducted and provided on request. CTM applicants should note that the request for national searches must be made at the time the application is filed. Applicants will not be able to request searches at a later time. Moreover, the CTM Office will charge a separate fee for the searches (the amount has not yet been determined).
Finally, applicants should note that the option for national searches is “all or nothing”. An applicant elects to receive searches from all 17 countries who currently provide search reports or none. Applicants may not cherry-pick certain countries for which they would like to receive reports.
New rules at the UK Patent Office too: In October 2007, the UK Intellectual Property Office stopped examining (and refusing) new applications on relative grounds (i.e., the existence of earlier registrations or applications). Accordingly, prior U.K., CTM and IR registrations will no longer prevent new UK applications from maturing to registration. While the IPO continues to conduct searches, it simply informs the applicant of any potentially conflicting mark. The IPO automatically informs only the owners of prior U.K. and IR registrations of the new applications. It does not automatically inform owners of earlier CTM registrations. However, owners of CTM registrations may opt-in for notification.
* Thanks to my friends at Graham Watt & Co. for this news.
Lacoste Loses Crocodile Dispute
Friday, January 4th, 2008A Gloucestershire dental practice has defeaed fashion chain giant Lacoste in a dispute over a crocodile trademark.
The two dentists – Drs. Tim Rumney and Simon Moore – were challenged by the French clothing giant after using a grinning reptile as the logo on their office’s welcome sign.
Lacoste claimed the cartoon crocodile was too similar to their own globally recognised logo, and could cause confusion among shoppers which could damage their business.
The dentists represented themselves at an initial hearing in May at the Intellectual Property Office in Newport, where Judge Ann Corbett ruled in the practice’s favor.
But Lacoste’s legal team filed an appeal, which was finally rejected late last year.
Big vs. Little
Wednesday, December 26th, 20072005 winner of the television show "Hell’s Kitchen" is now facing a trademark lawsuit by one of the world’s largest recording labels.
Chef Terry Miller shot to fame on television series Hell’s Kitchen, when he won praise for his signature dish named Rockafella.
The prawn and mash creation then inspired the name of the Newcastle restaurant he opened after winning the competition.
UMG Recordings Inc, which owns the Roc-a-Fella’s record label and whose artists include Elton John, U2 and rapper Kanye West, are objecting to Terry registering Rockafella as a trademark to protect the restaurant’s name.
If a legal battle goes ahead it could result in a hearing in London next year.
You can read the entire story here.
Japan to Lower IP Fees
Wednesday, December 26th, 2007In an effort to reduce costs to companies and promote innovation, Japan is considering reducing fees for trademark and patent filings.
If the plans are realized, fees for patent applications and maintenance would be cut by 12 pct on average, and trademark fees would be reduced by 43 pct, according to the officials.
The total cost of holding a trademark for 10 years, including the application and registration fees, is estimated to fall to 70,000 yen from 130,000 yen.
Gaza TM Office Ceases Operations
Monday, August 13th, 2007According to AG IP News, official sources in Gaza informed ag-IP-news Agency on Monday that filing of trademark applications, processing pending applications, issuing certificates of trademark registrations and any other related activities have all ceased at the Trademark Office in Gaza with effect from August 2007.
According to the sources, all employees at the Trademark Office were informally instructed not to show up for work.
Ag-IP-news Agency tried to contact the Ministry of National Economy for more information but without any success.
India & CH Sign IP MoU
Thursday, August 9th, 2007India and Switzerland on Tuesday, August 7th signed a Memorandum of Understading (MoU) for closer cooperation between the two countries in fostering protection and promotion of intellectual property (IP) rights.
The MoU was signed in New Dehli by the Union Minister of Commerce and Industry Kamal Nath and Doris Leuthard, Federal Councillor, Department of Economic Affairs of the Swiss Confederation.
India has already entered into similar bilateral agreements with the UK, France, European Patent Office, the US Patent and Trademark Office and Japan Patent Office. The cooperation as per these agreements is in the areas of capacity building, human resource development and public awareness programmes.