- Posted on: Mar 10 2016
The federal laws regarding intellectual property in the United States are designed to help businesses create and maintain the public’s awareness and to prevent others from taking advantage of the public trust that a company has worked – sometimes for decades – to achieve. If you are an owner of a business, it can be quite disturbing to find your company’s brand or trademark on a consumer item that your business did not produce or manufacture. Your legal recourse – and your success at pursuing that recourse – will depend to a great extent on how fully you have legally protected your trademark.
Yes, it can take some time and money to protect a trademark legally, but if you take the proper steps as early as possible, you will spend much less time and money, and you will also probably prevent some legal problems from ever emerging at all. To give your trademark the maximum legal protection, you’ll want to register the trademark both domestically and internationally. Let an experienced Washington, D.C. trademark attorney handle those trademark registrations on your behalf.
Like everything else, trademarks are quite a bit more complicated than they used to be. The first actual trademark legislation was passed by the English Parliament under King Henry III in 1266, and it required all English bakers to use a distinctive mark for the bread they sold. In the United States, the Lanham Trademark Act of 1946, with several amendments, has been the primary federal law governing trademarks.
WHAT IS THE DEFINITION OF A TRADEMARK?
Today, a trademark can be any word, phrase, name, symbol, or any combination of those that a company uses to identify and set apart its services or products from the services or products of other companies. Trademarks may also be symbols, drawings, the actual shape and packaging of goods, non-verbal signs such as sound effects or fragrances, or even distinguishing shades of colors. Most registered trademarks are simply a company’s name and logo, although some registered trademarks are iconic symbols now known to everyone, like the golden arches of McDonald’s and the Nike “swoosh.”
A trademark should be genuinely and exclusively distinctive to your brand. Its ultimate value is in the differentiation it creates, so that a consumer in the marketplace sees your trademark and immediately identifies it as a particular product or service. You can’t register something that is generic or a trademark that cannot be distinguished from other trademarks. Trademark registration is important legally, and it does offer you some genuine legal advantages, but in the United States you have no specific obligation under the law to have a trademark registered. Even without formal registration, you have some limited legal rights regarding your trademark, but when you register it, you gain the legal right to the trademark’s exclusive use and the right to protect it in court if necessary. You’ll want your trademark registered both in the U.S. and internationally as well for maximum protection.
WHAT STEPS SHOULD YOU TAKE?
The first step is to register your trademark in the United States and then in the other countries that are strategically important to your business. Before you register your trademark in the U.S., let a good trademark lawyer conduct a search on your behalf to see if any similar trademark is already in use. Applying to register your trademark domestically is a lengthy and complex procedure – it can take over a year in some cases, but after your trademark is registered, the registration will remain in effect as long as you submit all of the maintenance and renewal documents as required.
After your trademark is registered in the United States, if someone in this country uses it without your permission, speak immediately with a good trademark attorney. Trademark dispute cases are not like other legal cases, but with a federally registered trademark and the help of an experienced trademark attorney, a trademark owner is in a good legal position to take effective legal action. Infringing on a trademark is legally actionable, and the victims of trademark infringement can sometimes be awarded damages. Do not wait – have your trademark registered immediately in the U.S. if it is not already registered. Speak with an experienced trademark attorney at once if you are using – or just now designing or considering – a new trademark. Trademarks for interstate as well as international commerce should be registered with the U.S. Patent and Trademark Office (PTO), and you’ll need an experienced attorney who routinely handles trademark registrations and related legal matters.
WHAT IS THE MADRID PROTOCOL?
As you know, the commercial marketplace is global in the 21st century, so it is imperative for a company to control its trademark and trademark use internationally – rather than to allow another business to use it in another country. Thanks particularly to the internet, in some sense all brands are now global, and protecting your brand and trademark is an increasingly complicated legal challenge. If you are launching a new brand in the U.S. with plans for overseas expansion in the future, you should consider filing trademark registrations in those nations before someone leverages the good will you build in the United States and applies for the same trademark abroad.
If your trademark needs the maximum possible international legal protection (and for most businesses, it does), your trademark attorney will probably begin by explaining the “Madrid Protocol,” implemented in 1989 by the World Intellectual Property Organization (WIPO). The Madrid Protocol and Treaty is an international agreement that provides an efficient, cost-effective way for trademark owners to ensure protection for their trademarks in scores of nations by filing a single application – called an “International Registration” – with one office, in one language, and with one set of fees.
The cost of your international trademark registration will depend on several factors, particularly including which nations you and your company specifically designate for trademark protection. It’s usually not difficult to add trademark protection later for more nations. Prioritize which nations make the most sense for your brand and your expansion. Identify the key markets and secure trademark registrations in those nations first. It’s usually unnecessary to register your trademark in every possible country.
The Madrid Protocol also makes the subsequent management of your trademark quite convenient, since a simple, single procedure will record any future changes in the trademark’s ownership or in the name or address of the trademark owner. If your trademark is already registered domestically with the U.S. Patent and Trademark Office, you are eligible to apply for international trademark protection through the Madrid Protocol.
While international trademark registration is one application and one process on your end as the trademark owner, the ninety-seven Madrid Protocol member nations follow different trademark registration procedures – with different laws and standards – regarding trademarks in each nation. The national trademark office of any Madrid Protocol member nation may choose to reject a trademark registration for that specific nation for reasons such a possible conflict with an existing local trademark. The Madrid Protocol nations represent more than eighty percent of the world’s commerce and include the United States, Canada, Japan, Germany, Australia, Russia, and China. Specific fees and terms vary from nation to nation, but most Madrid Protocol trademark registrations last for ten years.
HOW CAN A TRADEMARK ATTORNEY HELP?
The Madrid Protocol member nations that receive your trademark application – the countries where you seek trademark protection – will have either twelve or eighteen months to reject a trademark application or to grant trademark registration and protection. If there is any conflict, confusion, misunderstanding, or if a challenge is filed against your trademark application, it can take even longer. In most Madrid Protocol member nations, if your trademark application is challenged, you’ll need legal representation. An experienced Washington, D.C. trademark attorney working with an international law firm can handle international trademark applications on your behalf, help you to avoid potential legal problems and challenges, and guide you carefully from start to finish through the entire international trademark registration process.
In many countries including the United States, legal trademark rights typically belong to the first party to use a trademark. But in other nations, the right to a trademark may be given to the party that first files and pays. That makes it a good idea to register your trademarks as early as possible in those markets and before conducting any business there. If you intend to do business in nations that are not part of the Madrid Protocol, talk with a good trademark attorney first.
Trademark rights must be maintained by the actual lawful use of a trademark. These rights will cease if a trademark is not actively used for a period of time, usually five years in most jurisdictions. International trademark protection can be crucial to a business. Registering trademarks – both in the U.S. and internationally – is complicated and takes some experience, but the relatively low cost of trademark registration is well worth it compared with the costs of damage control in the future if you have no legal way to protect your trademark. To acquire that protection for your own company, or to learn more about trademark registration and international intellectual property protection, promptly contact an experienced Washington, D.C. trademark attorney to arrange a consultation.