Thinking Globally: Trademarks for the Trainee

June 2018

By Members of the Foreign Department of Lando & Anastasi, LLP

What is a trademark / service mark?  A trademark is a source identifier, such as a symbol, word, or combination of symbols and words, that uniquely identifies goods as coming from a particular source.  A service mark is similar, but for services.  The term “trademark” is often used to cover both products and services.

The trademark is associated with the goods or services produced and/or offered using the trademark.  The goods/services listed will help determine the class under which the registration will be granted.  It is strongly recommended that an experienced trademark attorney assist in describing the goods/services and selecting the appropriate class so that your mark has the strongest protection available.

The process and timeline by which a mark becomes registered is dependent on several factors.  One factor is whether the mark is already in use.  Another factor is whether the mark has already been applied for or registered in another country.

For example, when filing a trademark application at the United States Patent and Trademark Office (USPTO), there are several options to select for a filing basis.   If Section 1(a) is selected the mark is currently being used in commerce.  If Section 1(b) is selected, there is an intention to use the mark in the near future.  Selecting Section 44(d) means that the applicant filed for the same mark in another county within the last six months.  Section 44(e) means a registration of the same mark is already in existence in another country.  Lastly, Section 66(a) means an application utilizes Madrid protocol to simultaneously protect the same mark in multiple countries. (More information about filing basis at the USPTO).

In general, applicants can usually expect the trademark registration process at the USPTO to take approximately 15 months.  About three or four months after filing, a USPTO examiner will decide whether the mark may be registered.  If the examiner decides the mark should not be registered, he or she will issue an Office Action explaining the decision and related objections to the mark.  The applicant then has six months to file a response to the office action, making arguments and presenting evidence in support of registration.  If  the mark is then deemed acceptable for registration by the examiner, the mark is published, giving third-parties 30 days in which to file an opposition.  If an opposition is filed within the time limit, a trial-like proceeding will be held to determine the outcome.  Once the mark is in use, the mark application will become a registered mark if no opposition is filed or if the opposition is unsuccessful.

The registration timeline in other countries may be different, and many countries do not require use before registering the mark, unlike the United States.  In  general though, the examination process is somewhat similar.

Madrid vs Direct

Filing overseas requires a decision:  whether to file in foreign countries directly, or through one centralized filing via the Madrid Protocol, administrated by the International Bureau of the World Intellectual Property Organization “WIPO”.  The Madrid Protocol is a filing system with over 100 member and 116 countries participating, allowing for one application to register in a number of national, regional and global markets.  Centralization is the main concept of the Madrid Protocol, providing a savings in cost and time. The streamlined Madrid process reduces costs in the initial filing, and delays (or avoids altogether) the need for hiring foreign associates.

In order to file a Madrid application, the applicant must have already registered or applied for a mark in their “home” IP Office (USPTO).  Once that “basic” filing is established, a Madrid application is filed through the USPTO (or the applicant’s own domestic patent office), and then sent to WIPO for a single examination. This can be a lengthy process and take up to 18 months to be awarded registration.

Although centralization can save you time and money, there are limitations on the types of amendments that can be made in a Madrid application. The ability to make changes is restricted if one pursues a Madrid application and later finds a mistake or simply wishes to amend their mark or goods/services.  Only mistakes made by the origin office are amendable and the description of the Mark must be the same as filed with the USPTO. All errors should be fixed prior to filing the Madrid application. If a rejection is received in the domestic office, it can have an effect on all the countries designated via the Madrid Protocol.

Formalities

Trademark formalities vary country by country, both in the documents that are required for filing and in the deadline to submit these documents with the local trademark offices.  When planning the foreign filing of a trademark application, it is important to determine the filing strategy early and, if filing directly in other countries, engage the services of foreign agents well before the deadline.  This is due to the fact that some countries require that formal documents be submitted at the time of filing in order to receive a filing date. If formal documents are not submitted at that time, it may not be possible to file with the desired priority claim. China, for instance, requires not only an executed Power of Attorney at the time of filing but also official documents confirming the applicant’s identity, such as a copy of the Certificate of Incorporation or a corporation or a passport of an individual.

As mentioned above, the formalities required to complete a trademark filing vary by country. It is important to confirm with your foreign agent at the time of sending instructions that they have all of the documents necessary to move forward. Common documents required in trademark filings include Powers of Attorney and certified copies of Applicant’s home country registration. The requirements for these documents will also vary by country. While a simple copy of the Power of Attorney will suffice in China, other countries such as Saudi Arabia will require a legalized Power of Attorney at the time of filing.  It can take weeks to furnish a legalized document since the legalization process involves having the signature witnessed by a Notary Public, authenticating the Notary’s signature by the governmental agency commissioning the Notary, and then possibly further authentication involving local Consulates.

In preparing for a trademark filing, the most important aspect to keep track of is timing. Determine your filing strategy well in advance of the deadline and confirm with your agents the deadlines to complete formalities as quickly as possible, in order to minimize risk and obtain the broadest protection.

Use/Marking

Once a mark is registered, the trademark owner must focus on use and marking requirements, as they can play a big factor in protecting rights.  In most countries, a mark must be used within a specified period of time, which is commonly 3-5 years from the application or registration date; however, can differ from country to country.  Once this period of use has elapsed, anyone can bring a cancellation action on the grounds of non-use.   An owner of a mark needs to keep track of their proof of use in all countries where the mark is registered; however, it is typically only necessary to keep this proof in their own personal files.  Should a mark be attacked on the grounds of non-use, the trademark owner will have proof readily available.

Similar to use, marking requirements can also differ from country to country depending on accepted practices.  Marking gives notice to the public that the owner is claiming trademark rights.  A common example of marking is the use of the symbol, which conveys to the public that the mark is registered in the Trademark Office of that particular country.

Other common examples of marking include the use of the “TM” symbol to denote a claim of (typically) unregistered trademark rights.  The “SM” symbol is used to denote an unregistered service mark.  “Registered Trademark” or its translation into the official language of the jurisdiction (e.g., “Marca Registrada” in some Spanish speaking countries) is also commonly used.

As marking and use are treated differently in each country, owners need to approach the subject of packaging and/or labeling, along with advertising carefully before relying on a specific symbol for marking purposes, and what may constitute appropriate Use.

Renewals

In most cases, Trademark Registrations can be renewed indefinitely as long as renewal formalities are completed by the deadline to do so.  The term for the trademark registration is set by the country issuing the registration.  Registration terms are ten years in the US, but can vary depending on specific country law.  Additionally, when the country considers the term to begin (priority filing date, filing date, or registration date) will also vary.  It is important to know and understand the local rules to ensure that deadlines relating to the renewal of the mark are properly noted and addressed.

It is also critical to make an early decision regarding renewal since plenty of lead time is needed in many countries.  As with filing formalities, some countries may require legalized power of attorney documents, proof and/or declaration of use of the mark, the original registration certificate, or address change documents at the time of requesting the renewal.

 

This is a very simplified view of the trademark process.  We encourage you to speak with Lando & Anastasi’s trademark attorneys regarding specific needs and/or advice.