Copyright Law Blog

International Trademarks and the Madrid Protocol

July 28th, 2009 at 06:41am Under trademark law

To obtain a trademark, one has to file an application with the Patent and Trademark Office. The application sets out the areas, known as classes, you wish the mark to apply to. Once the “PTO” approves your application, it is published for comment. Assuming no objections are raised, your trademark is approved. It is important to understand, however, the mark only applies to the United States.

If you want to gain international protection for your trademark, you need to understand the Madrid Protocol. The protocol was created to deal with problems where two marks were registered in different countries and conflicts then resulted. The idea is to create a clearinghouse where a trademark in one country automatically applies to the other countries signing on to the Protocol. The United States signed on to the Madrid Protocol in 2003. 80 others have signed on as well, including most major economic countries.

To apply for an international trademark, one files a form with the Patent and Trademark Office. The application must perfectly match the national mark you are seeking. Once filed, it is forwarded by the Patent and Trademark Office to the International Bureau in Switzerland where the application is run against an international database and approved or rejected.

The cost for filing the international application is $100 per class you wish the mark to apply to, although there are exceptions where $150 is the cost. If approved, the registration will last for a period of 10 years. You can renew the registration for subsequent 10 year periods as necessary.

Filing an international trademark is a smart move if you envision your business entering international transactions. A question of cost effectiveness, however, certainly needs to be considered for most small businesses. Simply put, your money may be spent more effectively in other areas.

UK Patent Guide 2009

July 24th, 2009 at 12:41pm Under intellectual property

We’ve all seen and heard of patents, but how many people actually know what a patent does and what you can get a patent for? The simple answer to this question is that, although many people are aware of the function of a patent, surprisingly few people know anything more than that, even straightforward aspects such as what you can get a patent for. A patent is one of four main types of intellectual property, which is essentially any form of ‘original creation’ that can be bought or sold. The other three are trademarks, designs and copyright. Patents are used to protect new inventions and give the owner of the invention the legal right to prevent others from ‘making, using, importing or selling’ the invention unless they first obtain the permission of the owner. However, on rare occasion, a patent is not enough to stop other people from attempting to exploit the patented invention through importing, copying, manufacturing or selling the invention. In such cases, a patent would give the owner the legal right to take those exploiting the invention to the courts in order to claim damages against them, and, as a result, a patent can act as a deterrent to those who try to exploit inventions. Part of the way it does this is by detailing the invention very clearly so that the court would be able to see it had been copied. Patents cover many different aspects of an invention, such as how inventions work, what function they carry out, how they carry out that function, what the invention is made of, and how the invention is made. Patents allow the owner to sell the invention and to sell the intellectual property rights, and to license the invention to someone else whilst retaining the intellectual property rights. Additionally, a patent allows the owner to chat about the invention with other people so that they may start a business that is based around the invention. There are many reasons to patent an invention, and one of the foremost reasons is that of what will happen if you do not patent your invention. If you invent something and do not patent it, anyone can use, manufacture, and even sell your invention without first obtaining your permission. Although it is sometimes possible to keep an invention a secret, it is often impossible to do so if technology is on display as part of the invention. If you have invented something that you wish to patent, an important consideration to bear in mind is that you should not tell anyone about your invention before you apply to patent it, as this can cause your application to become invalid. There are, of course, exceptions to this, in that you can speak to – and it advisable to do so – solicitors, registered lawyers, or even a patent agent, as anything you tell them will be in confidence as it is legally privileged. Another thing to consider is that you cannot patent certain things, such as mathematical discoveries or artistic work, because they do not conform to the requirements of patent protection. Inventions must ‘relate to how something works, what it does, what it is made of, or how it is made’, it must be new, it must be an inventive step in the area it covers, and it must be capable of being either made or used in an industry. Before applying for a patent, it helps to get good, confidential advice from a professional, such as a solicitor. If you wish to find out more – before talking to a professional – about, for example, the requirements for patent protection it is best to go to the government website for its Intellectual Property office, where all guidelines on patents can be found. This article is free to republish provided the authors resource box below remains intact.

Using a Mark you Cannot Trademark – be Careful

July 23rd, 2009 at 12:42am Under trademark law

A mark is simply something that identifies your products or services to consumers. Classic examples of this include “coca cola”, the Nike Swoosh and many others. When you see one of these marks, you immediately identify them with the company and product in question. In legal terms, the mark is indicative of a certain quality of products or services.

When coming up with your mark, you have to be careful. Not everything can be trademarked. For instance, “Google” is unique and clearly something that can be trademarked. When you see the Google logo, you know it refers to a search engine that allows people to find things on the web. Now, what if Google was instead called “search engine?” The phrase is already commonly used and associated with other sites providing search functions for consumers. As a result, it cannot be trademarked.

So, why does all of this matter. Try to look into the future for your business. What if you become a huge success? Remember, Microsoft started with a couple of people and so did Google. You could be the next one. That being said, what if you “go big” with a mark that cannot be trademarked? Other businesses will be able to use your mark! If you want to talk about a business disaster, this is it.

Imagine if Google could not be trademarked. Every other search engine could use the term in their marketing and on their web pages. This would cause massive confusion among consumers. More importantly, those consumers would be diverted to competitors of Google. Do you think that would hurt Google’s bottom line? You bet.

When starting a business, try to use distinct names and logos that are not common place. Get your trademarks. As the business grows, consumers will come to know your mark and identify it with your product or service. This, of course, is the key to getting them to come back and buy from you.

Can you Trademark your Business Name?

July 22nd, 2009 at 12:44am Under trademark law

A trademark is a consumer oriented thing. While it protects the intellectual property of businesses, it is a legal step designed to protect consumers. The basic idea is a trademark should point to a particular product or service and only be used by the company backing those items. This helps consumers in two ways. First, it represents an assurance of a particular type of quality associated with the products or services provided by the company. Second, it precludes other companies from causing consumer confusion by infringing on that mark.

When it comes to your business name, you can trademark it if certain requirements are met. I am going to avoid the legal mumbo jumbo that confuses people, and stick with a general rule of thumb. If you use your business name in advertising or on the product or service, you can trademark it. A classic example is “Google”. Google is both a company name and used on the service itself. When you go to the home page of Google, you see “Google” prominently displayed. As a result, this business name can be trademarked.

If you do not use your business name in a direct communication to consumers, you cannot trademark it. Why? Well, there is nothing distinct about it that reminds consumers of the connect. TJMaxx is a well-known discount retail store. Most people have at least heard of the name. The company behind the name, however, is actually TJCos. Nobody has heard of “TJCos” and certainly do not associate it with a store. As a result, this business name would be difficult to trademark, if not impossible.

If your name is going to be a fundamental part of your marketing effort, you should consider trademarking it. If it is not, then your probably should save your money. Obviously, each situation is different, so make sure you speak with legal counsel in your area.

The Role of Trademarks

July 20th, 2009 at 12:43am Under trademark law

A patent, for example, is designed to protect the inventor from having other parties use it without consent. Copyright works much the same way. A person who writes a hit song should receive compensation from it and copyright is designed to protect the person in this regard.

A trademark is unique because it performs two purposes. The first is similar to patents and copyrights. A trademark is a way for a person or business to protect a logo, etc., from the misuse by others. In truth, this is pretty much the underlying idea of most intellectual property. The only time a protected intellectual property right can be legally infringed upon is if the infringer pays a royalty or licensing fee for the right to use it.

Trademarks, however, also serve a secondary purpose. This purpose has its basis in something called public policy. Throughout the law, you will find guidelines that are set forth as a matter of public policy. These guidelines essentially are designed to help the general pool of consumers in some way.

With trademarks, there is a strong public policy supporting their establishment. The policy has to do with consumer confusion and the quality of products or services. When a consumer sees a trademark, they associate a company and level of quality with that mark. For instance, a person associates a certain cola drink with the “Coca Cola” trademark.

When a trademark is allegedly infringed upon, the court will evaluate the issue of whether the alleged infringement is such that it is likely to confuse consumers. If it is, then a ruling of infringement is more like. For instance, assume Reebok started selling a sneaker that had a swoosh similar to Nike. The swoosh, however, was vertical instead of horizontal. Nike would certainly file suit for trademark infringement claiming that the Reebok swoosh created confusion among consumers. It would also win!

When considering whether to trademark your logo, etc., you need to evaluate how it helps consumers identify with your product or service. The more distinct your mark, the better chance you have of both being approved for a trademark and then defending it against competitors.

You Can Trademark a Lot More Than you Think

July 19th, 2009 at 06:42am Under trademark law

Another example is the big red “O” you see in the television commercials for Overstock.com. Such examples of trademarks are fairly standard and most people can understand them without much effort.

The thing that surprises many people is you can trademark many things other than a logo. The key to making the determination is to understand the definition. A trademark includes any word, name, symbol, device or combination thereof. The thing to be trademarked must be used in commerce to identify and distinguish the goods or services of the applying party from those of others.

This rather broad definition can lead to some interesting trademarks. An apple a day keeps the doctor away, but you could never trademark an apple if you grew and sold them. The word is simply too common and does not distinguish your apples from anyone else. If you built a computer, however, and called it Apple, you can get a trademark. Why? The commonly used word is being applied to an area of commerce where it is not commonly used. Further, it clearly distinguishes a particular type of computer from others in the business field.

A unique phrase can also be trademarked in appropriate situations if it distinguishes the product or service line clearly to the consumer world. “Just do it” is a phrase that is not unique or abstract in and of itself. When applied to Nike advertising and media, however, it is distinct and tells the consumer the product being supplied is from Nike. As a result, the phrase can be trademarked.

Perhaps the most unique trademark is one for sound. Certain sounds are associated with products or services and thus can be trademarked. A classic example is the bonging noise used on the Law and Order television show. When a person hears the noise, they immediately associate it with the show.

Obviously, the issue of whether something can be trademarked is a complex issue. You cannot just walk around trademarking various sounds and such. The Patent and Trademark Office wants to see some practical application in commerce that is known by people. That being said, do not assume that you can’t trademark something just because it is not a logo.

If I Add “tm” Next To The Mark I Want To Trademark, Is That Sufficient Enough To Protect It Under Common Law?

July 19th, 2009 at 04:26am Under trademark law

NO, you have to pay for it to be trade marked. and it only lasts every few years you have to pay again.