TABLE OF CONTENTS
- Absolute Grounds
- Basis/Bases of Filing
- Certification Mark
- Certificate of Registration
- Clearly Descriptive
- Commissioner of Trademarks, Registrar of Trademarks, etc.
- Common Law Trademark
- Date of First Use
- Deceptively Misdescriptive
- Declaration of Invalidity
- Design Mark
- Design Patent/Industrial Design
- Distinguishing Guise or Configuration
- Entitlement Date
- Extension of Time
- Filing Date
- Filing Receipt/Filing Notice
- Foreign Application
- Foreign Registration
- Geographical Indication
- Goods and Services
- Industrial Design
- Integrated Circuit Topography
- Intellectual Property
- Intent to Use/Proposed Use
- International Class
- Legal Entity
- Madrid System/Madrid Protocol/Madrid Agreement
- Office Action
- Official Fees
- Official Search
- Opposition Board
- Paris Convention
- Patent/Utility Patent
- Plant Patent/Plant Breeders’ Denomination
- Place of Origin
- Preliminary Search
- Pre-publication Verification
- Priority Date
- Professional Fees
- Prohibited Marks/Official Marks
- Proposed Opposition
- Registered Trademark
- Service mark
- Statement of Opposition
- Trademark Agent/Attorney
- Trademark Drawings
- Trademark Infringement
- Trademark Office
- Trademark Register
- Trademark Specimens
- Trade Name
- Trade Secret
- Unregistered Trademarks
- Wares & Services
- Watching Programs
- Word Mark
A Trademark application which is no longer in effect due to the Applicant’s intentional or unintentional failure to timely respond to a communication from the Trademarks Office (called an Office Action) or the Applicant’s failure to take some other required step or the Applicant’s failure to appeal a final refusal issued by the Trademarks Office is considered abandoned. It is not correct to refer to a Trademark application (as opposed to a registration) as being cancelled or expunged as a Trademark application has never matured into a registration. A Trademark application which is inadvertently abandoned may or may not be reinstated depending upon the country involved and with varying degrees of complexity and/or cost.
It is a common world-wide Trademark requirement that a Trademark may not have a meaning or definition which describes the goods and/or services to which the Trademark and the Trademark registration relate.In many countries or regions, most notably including countries in the European Union and the European Union itself, Trademark applications may be refused on so called “absolute grounds” where the Trademark is considered to define the goods or services.This restriction exists to prevent an Applicant from preventing a competitor from using a necessary word to describe the goods or services being sold by the competitor.
Once a Trademark application has been examined by the relevant Trademarks Office, and the examining body has found no objection to the registration of the mark and after the Trademark application provisionally approved by the Trademarks Office has been published in a government publication (to give third parties an opportunity to oppose the Trademark application), without a Statement of Opposition or equivalent being filed against the Trademark application, the application proceeds to what is known as Allowance and a document typically referred to as a Notice of Allowance is issued indicating that the examination of the application has been completed and that the time period for opposition has expired without an opposition being filed.In some cases and some countries, a Notice of Allowance may not issue and an application may proceed directly to registration once through examination and publication.If, however, some further proof of use is required before the Trademark can be registered, then a Notice of Allowance is typically issued.A Notice of Allowance is intended to indicate to the Applicant that no objections to registerability of the Trademark have been found by the Trademarks Office but that one or more conditions must be met before registration may occur.These conditions typically include at least a proper request for registration and may include a registration fee (separate and apart from the original application fee) and may include a Statement of Use or Declaration of Use alleging that the Trademark has properly been put into use in the country or region of application and may include evidence of proper Trademark use in the form of “specimens” showing the mark as actually put into use with the goods and/or services in the Application.Accordingly, an Applicant should clearly understand that an Allowance or Notice of Allowance is not the same as a registration or Certificate of Registration and unless registration of an allowed mark is requested, the allowed application will go abandoned.
The typical term used to describe a transfer document evidencing the transfer of the ownership of a Trademark, a Trademark application and/or a Trademark registration from one party to another. Assignments may or may not be required to be in a particular form or wording depending upon the country or region involved. The particular wording of an Assignment is typically adapted to meet the specific circumstances. Various Assignments will need to be registered in one or more Trademark Offices or may merely be referred to in one or more documents filed in a Trademark Office and/or a particular Trademark Assignment may not be referred to at all on the public register in one or more Trademark Offices. However, where an Assignment is not registered in a relevant Trademark Office, the signed Assignments must be retained in the event that proof of the transfer of the Trademark is ever called upon by the Trademarks Office or a Court of competent jurisdiction. Typically signed copies of all Assignments are given to both the Assignor (the seller) and the Assignee (the buyer), and with signed copies of the Assignments usually also being deposited with the attorney or agent for each of the Assignor and Assignee. Preferably enough copies of the Assignment are signed on the transfer date to provide for at least one signed copy for each required Trademark Office in addition to the file copies for the Assignor, Assignee and their attorneys and/or agents. Various Trademark Offices may also have other formal requirements for the filing of Assignments such as attorney/agent verification, witness statements, affidavits of subscribing witness, and/or “legalization” (as defined in this Glossary), depending upon the country or region involved.
In many countries, typically including common law jurisdictions, especially Canada and the USA, an Applicant must have at least one basis for filing for each good or service sought to be included in a Trademark registration. These bases may include the actual use of the Trademark by the Trademark Applicant prior to the filing of the Trademark application itself. A basis of filing may also comprise proposed future use in which case proof of use, sometimes together with specimens evidencing that use, must be filed before Trademark Registration may be validly requested. In many countries the registration of a Trademark in a foreign country may also initially suffice as a basis of filing a Trademark application, although use of the Trademark will eventually need to take place in the country of the new Trademark registration, or the resulting registration may eventually be lost.
Trademark Registrations (as opposed to Applications) which are terminated due to non-renewal or other requirements of continued Registration, or that are terminated by the relevant Trademark Office or a Court of competent jurisdiction based on a challenge raised by a third party (usually a competitor), and sometimes by the Trademarks Office itself, is said to be cancelled or expunged. The extent of the authority of a particular national or regional Trademark Office varies from country to country or region to region. Typically, whatever is not within the jurisdiction of the national Trademark Office is a matter for a Court of competent jurisdiction, usually in the country of Trademark registration.
A mark used to distinguish goods or services which are of a defined standard, typically, the nature or quality of goods or services, the working conditions under which the goods have been produced or the services rendered, the class of persons by whom the goods have been produced or services rendered, or the area or region within which the goods have been manufactured or the services rendered, from goods or services that are not of that defined standard.Often the Registrant of a certification mark is prohibited from using the mark itself and in some countries may only license or permit the mark to be used by others.Accordingly, certification marks are common for associations.
Once the processing of a Trademark application is successfully completed, a document typically referred to as a Certificate of Registration or Registration Certificate is issued indicating that the Trademark is registered and typically indicating when the Trademark registration must be renewed and/or when any other conditions for continued registration must be complied with. Initial and follow up terms of registration are typically counted from the date of registration, not the date of application, but this is usually determined on a country by country basis. Depending on the country involved, the initial term before a Trademark must be renewed is often 5, 10 or 15 years. Typically Trademark registrations may be renewed indefinitely provided that the required conditions for renewal are met. However, renewal requirements are typically dealt with on a country by country or region by region basis depending on whether the mark is a national registration or a regional registration.
A Trademark which is clearly descriptive is typically not registerable as registration would otherwise prohibit others in the same industry from using a necessary word, phrase, or design. A word, phrase, and theoretically a design (i.e. artwork), that is clearly descriptive, whether depicted, written or sounded, typically in one or more of the official languages in the country or regions involved, of the character or quality of the associated wares or services, or the conditions under which the goods or services are produced or rendered, or of the place of origin of the goods or of the persons employed to render the good or services, is usually unregisterable. Similarly, the names of goods and services, in any language, are usually unregisterable. However, if additional Trademarkable subject matter is added to an otherwise clearly descriptive mark, the additional subject matter may make the entirety of the Trademark registerable, often subject to a disclaimer with respect to the portion of the Trademark which is clearly descriptive (see Disclaimer).
Each national or regional Trademark Office typically has an individual having authority for the entirety of the Trademark section of an Intellectual Property Office for the country or region. Correspondence may be addressed to the head of the Trademark section, depending upon the country or region involved. However, note that many countries have strict rules as to how and to whom Trademark correspondence is to be addressed and sent, failing which the correspondence might not be deemed received, acknowledged, or effective.
At its most basic level, a Trademark is a means of distinguishing the goods and services of a seller from the goods or services of others. Accordingly, Trademarks may be registered or unregistered, although registered Trademarks have significant advantages over unregistered Trademarks (see Benefits of Registered Trademarks). A Trademark which is in use but not registered may be referred to as a Common Law Trademark (at least in Common Law jurisdictions) or an unregistered Trademark.
Another form of intellectual property protection, separate and apart from Trademark protection, and usually implemented via separate legislation or treaty, which usually protects original literary works, dramatic works, musical works, and artistic works. It may also protect so called neighboring rights including performing rights, sound recording rights and communication signal rights. The primary relevance to the field of Trademarks is that a Trademark which has a design element over and above a short word or phrase alone, may be covered in a copyright as an artistic work. Thus, Trademarks which consist solely of significant artistic or graphic features without words, to Trademarks which may be as simple as a font applied to a short word or phrase, may be protected in copyright as artistic works Further, a lengthy phrase or slogan may in some circumstances also qualify under copyright laws as a literary work. Such works typically enjoy protection under both Trademark and Copyright legislation. Copyright protection for these Trademarks usually automatically arise upon creation of the work in copyright treaty countries, although registration of a Copyright, typically registered on a country by country basis entitles the Registrant to additional benefits. Where such overlapping protection exists, Copyright registrations have the benefit of being available weeks or months after filing a Copyright application, rather than months and years after filing a Trademark application. Accordingly, one or more Copyright registrations comprise an inexpensive and useful form of additional protection for an intellectual property law portfolio.
In Trademark opposition proceedings, the response or defense document filed in response to a Statement of Opposition in some countries is called a Counter-Statement.
In many countries, typically Common Law jurisdictions, the person or entity who first uses the Trademark in a particular country or region is typically the party entitled to registration, often even if a third party applies for registered Trademark protection first (in which case the party with the date of first use must oppose the first filed application for the same or a confusingly similar mark, sometimes before a Trademark application can be processed in favour of the party having an earlier date of first use. Accordingly, a prompt filing of a Trademark application may be significantly less burdensome, even if a party has an early date of first use, in some cases years or decades before filing a first Trademark application for the same mark.
Trademarks which are deceptively misdescriptive are not typically registerable as registered Trademarks regardless of whether or not additional subject matter is added to the mark and/or whether disclaimers are offered for all or a portion of the mark. In particular, Trademarks deceptively misdescriptive, whether depicted, written or sounded, usually in an official language of the country involved, of the character or quality of the goods or services, or of the place of origin of the goods or services or of the conditions under which the goods or services are made or rendered, or of the persons employed in the manufacture or rendering of the goods or services, are not registerable. It is presumed that this is based on the public policy of not legitimizing a Trademark by registration where the buyer of the goods or services would be likely to be deceived. For example, ‘PLUTO JEANS’ might be registerable where as ‘EUROPEAN JEANS’ may not. Why? While PLUTO JEANS is mis-descriptive in that the jeans would not be made on the planet Pluto it is not deceptively mis-descriptive in that the likely buyers of the goods would not assume that the jeans were made on Pluto given the current state of space travel.However, the intended consumers of EUROPEAN JEANS may be deceived into believing that the jeans are made in Europe.
In any dispute between two competing Trademark holders, a court of competent jurisdiction may be asked to declare that a particular Trademark registration, or application, is invalid and should be cancelled or expunged from the relevant Trademarks register.A court proceeding for a Declaration of Invalidity may be initiated before competing and potentially infringing Trademark use is commenced.Alternatively, when a Trademark user is sued for Trademark infringement, there is typically a counterclaim which requests a Declaration of invalidity (that is that the registered Trademark which is sought to be enforced is invalid).
The term commonly used by Trademark professionals and some Trademark offices to describe Trademarks with a design component.This may be a logo without letters, words or numbers, or may be artwork associated with letters, words or numbers and which may be as simple as adding a particular font or colour to a word mark.
A separate form of Intellectual Property protection sometimes referred to as a Design patent or an Industrial Design, depending upon the country, which protects the visual features of shape configuration, pattern or ornamentation, or any one or more of these, in a finished article of manufacture. A Design patent or Industrial Design registration, or the like, protects the look of the actual product being sold. The three-dimensional shaping of an article may or may not also comprise a distinguishing guise or configuration protectable under Trademark Law and be capable of distinguishing the individual article from similar articles of others. However, Design patent or Industrial Design applications, or the like typically, unlike Trademark Application, may be barred if the article has been publically disclosed before a relevant application has been put on file in a relevant country or within a relevant grace period for doing so. Most countries do not have grace periods for such applications. This is an example of overlapping protection in another area of Intellectual Property.
Where various words or phrases of a Trademark are clearly descriptive (as opposed to Trademarks which are in whole or in part deceptively mis-descriptive in which case a disclaimer cannot cure the misdescription), a disclaimer may be required by a relevant Trademark office or given or volunteered by the Trademark applicant in order to permit the entirety of the Trademark to be registered.A disclaimer typically means that the Trademark applicant, soon to be registrant, cannot claim exclusive use of the disclaimed word or words or design except to the extent that an allegedly infringing Trademark is confusingly similar to the Applicant’s then registered Trademark taken as a whole.A disclaimer may be in respect of a particular word or words individually, or a series of words as a unitary phrase may need to be disclaimed if it is the phrase which is clearly descriptive rather than the individual words.In other words, three separate disclaimers for three individual words would typically be stronger than one disclaimer for a particular word string or phrase.Why? Separate disclaimers for the individual words still allow for the protection of the words in a particular order (i.e. the phrase with descriptive words in that order may still be protectable).Accordingly, even if all of the words in a Trademark are individually disclaimed, the Trademark as a whole may still be protectable in some countries, but not in others.For various technical reasons, a Trademark is stronger if a Trademark is demanded by a relevant Trademarks office and not volunteered (especially in the original Trademark application) by the applicant.Unless significant strategic issues are involved, volunteering a disclaimer is not something that a Trademark professional would typically do, even if a request for a disclaimer is expected, and may increase the number of Office Actions issued by a Trademarks office requiring response.This is usually not too onerous in that Office Actions are often issued with multiple amendment requirements, and not just a disclaimer requirement.This is a typical mistake that individual applicants make where their application is not prepared by a Trademark professional (Trademark attorney or Trademark agent).Why: (1) the Trademarks Office may not consider a disclaimer necessary (based on Trademark experience which knowledge a lay Trademark applicant typically does not possess); (2) the disclaimer given may be broader than that required; (3) even if the disclaimer is required, the Trademark is stronger if the disclaimer is given in response to a demand from a relevant Trademark office; and (4) some countries no longer demand, or permit, disclaimers due to changes in Trademark law or policy.
The form of Trademark protection which protects the shaping of wares or their containers or mode of wrapping or packaging the wares.
In many countries, an Applicant’s “Entitlement Date” is the earlier of the Applicant’s (1) first use date, (2) Filing Date; and (3) Priority Date. Thus, in a dispute between two pending applications, the Applicant having the earlier Entitlement Date is generally entitled to registration and the Applicants for all other identical or confusingly similar marks are typically refused registration. While commencing use establishes a first use date, this will typically not be effective to block a third party from obtaining a Registered Trademark without opposition proceedings for the identical or a confusingly similar mark for similar goods and services, as common law Trademarks which are not the subject of a pending Trademark application or a Trademark registration in a particular country or region are typically not brought to the attention of, or considered by, the relevant national trademark office. In other words, if a party with a date of first use does not monitor competing Trademark use and initiate an opposition on their own, a directly competing mark would usually be registered against them requiring expensive procedures to de-register the mark not entitled to registration. Furthermore, commencing use of a Trademark without filing a Trademark application either simultaneously or prior thereto, alerts others to the mark who might apply for the identical or a confusingly similar mark before the party with first use has a chance to apply. Accordingly, a more effective procedure is to file at least one Trademark application in a qualifying Paris Convention country which usually reserves the Trademark for six months in all Paris Convention countries. This is especially so as a date of first use, in a particular country is typically not recognized as a starting date for rights in other countries, whereas the filing date of a first Trademark application (the Priority Date) is recognized as a starting date for Trademark rights in all other Paris Convention countries, assuming that a corresponding Trademark application is filed in all other countries and regions desired by the Priority Date holder within six months of the Priority Date. Accordingly, a Trademark Applicant’s entitlement date will be the earlier of their First Use Date, Priority Date, and Filing Date, in countries in which the Trademark applicant has established a First Use Date in that particular country, provided that the country is one that recognizes First Use as commencing Trademark rights. Conversely, in countries where a Trademark Applicant has not commenced use of the Trademark and accordingly does not have a date of first use in any particular country and/or the country does not recognize a Date of First Use as granting Trademark rights, then the entitled party will generally be the party with the earlier Filing Date or Priority Date.
That portion of the prosecution (processing) of a Trademark application, wherein a Trademark application is examined for compliance for non-formal requirements of the relevant Trademark legislation (the formalities of a Trademark application being dealt with at the Filing Receipt stage).During examination a search of the records of the relevant Trademarks office, including domestic Trademark applications based on foreign filings upon which priority has been claimed, are considered.In most jurisdictions, Trademark applications with an earlier entitlement date for confusingly similar Trademarks (for the same or related goods or services and sold in the same or related channels of Trade), are usually cited against the Trademark in the application being examined based on confusion, which is a fundamental Trademark concept in most jurisdictions.Objections based on confusion and other national Trademark requirements in the country of application, if any, are then relayed to the applicant in what is commonly referred to as an Office Action.The applicant is typically given an opportunity to respond to the Office Action before the application is either rejected or must go to appeal.
Extensions of Time are typically of two (2) varieties: pre-allowance extensions and post allowance extensions.Pre-allowance extensions are usually given in response to an Office Action from an Examiner citing objections to registration based on conditions which may or may not come to fruition.For example, an approval may be needed before the Trademark application can proceed, in which case the Trademarks Office may grant an Extension of Time to seek such approval if it is reasonable to do so in the circumstances.Alternatively, if a particular mark is being cited as confusingly similar, it may be that the earlier mark is in the process of being cancelled or expunged, in which case it may be reasonable to wait and see whether the barrier to registration is removed before the applicant is forced to respond in full to an Office Action. Post allowance extensions are often permitted upon payment of an official fee, to extend the time within which registration must be requested (and paid for) after the issue of a Notice of Allowance.A fixed period of time is typically given in or in respect of a Notice of Allowance within which to request registration and provide all other requirements of registration, often including an assertion of Trademark use in respect of selected goods and services in the country of application, and sometimes together with specimens evidencing Trademark use in respect of some or all of the designated goods or services to be listed in a Trademark registration.Often a Trademark applicant is unable to show Trademark use in the country of application for any or all of the goods or services designated in the Trademark application by the deadline typically set out in the Notice of Allowance.In this case, the applicant is often permitted to request a series of Extensions of Time of limited duration upon payment of a proper request and payment of an official fee to be received by the relevant Trademarks office in a timely manner, often in a particular mode of delivery.If a Trademark applicant exhausts all extensions then typically a Trademark professional will recommend registering the Trademark application for whatever goods or services the applicant has used the Trademark prior to the last extension expiring and filing a new Trademark application for the goods and services which were not able to be included in the registration due to non use or other reasons.Should such a new application be required, the applicant will lose its original filing date and priority date.As there is typically no earlier use date that can be brought forward in such circumstances, the date of the filing of the follow up application will typically be the applicant’s entitlement date for the goods and services set out in the follow up application.
The date of effective filing of a national or regional Trademark application. All Trademark applications will have a filing date regardless of the content of the application and regardless of whether or not the Trademark application ultimately goes abandoned or is registered. Many countries allow for Trademark applications to be filed on the basis of intended future use in which case, the Applicant’s right to the Trademark applied for will typically not be later than the filing date, although a party with an earlier entitlement date is usually awarded registration of the Trademark. Accordingly, early filing of a Trademark application for a Trademark where use that has not yet commenced is important in order to provide a starting point for an Applicant’s rights to an intended or proposed Trademark where otherwise rights do not begin to accrue until either an application is filed or actual use of the Trademark in the country or region commences (also see Priority date). In other words, once a Trademark application is filed, no one will be able to jump ahead of the Applicant except for those with a provable entitlement date prior to the filing date of an Applicant.
The document that a national or regional Trademark office issues after reviewing an application for formalities confirming that the applicant has met the minimum requirements for obtaining a filing date and a filing number. The filing number, amongst other things, should be used in all correspondence sent to the Trademarks office. The filing receipt, like all other documents from the Trademarks office, is a form of Office Action, the contents of which should be checked for accuracy. In particular, the Filing Receipt should be checked for the proper spelling of the name of the Applicant, the Applicant’s address, the name of the Trademark attorney or agent, their address and all other recorded information. In particular, the filing date stated in the Filing Receipt or Filing Notice should be checked for accuracy. Depending on how the Trademark application was filed with the Trademarks office, the mode of delivery may result in a deemed filing date which may not be the same as that assigned by the Trademarks office. If an incorrect filing date is recorded and allowed to stand, this could jeopardize the validity of the application or registration, and or applications or registrations filed in foreign countries claiming priority on that application. It is a common requirement in most Trademark offices that all information on the Trademarks register must be correct and kept current. The filing number is assigned by the Trademarks office and typically there is no way to verify a filing number, except against the Trademark office database, unless some obvious error has occurred.
A foreign Trademark application which is the first filed application in a Paris Convention country (see Paris Convention) may form the basis for a Priority Claim if a corresponding Trademark application for the same mark for the same goods and services is filed in another Paris Convention country within six (6) months of the first filed Trademark application in a Paris Convention country. However, depending upon the country or region involved, the foreign application may or may not be eligible to form the basis for a priority claim unless the applicant is a resident or citizen of the foreign jurisdiction or a legal entity (see Legal Entity) established in the foreign jurisdiction or has a real and effective commercial establishment in the foreign jurisdiction (before an application is filed). A foreign application forming the basis for a priority claim should not be confused with a foreign registration which may form a basis or ground of registration in another country. However, in some countries if a valid priority claim is made upon a foreign application, the domestic Trademark office may allow the applicant to wait until the foreign application matures into a foreign registration, which may then form a basis of registration.
By Treaty and/or other wise, a foreign registration may form the basis of a Trademark registration in a different country without the need to prove use of the Trademark in the country of application (at least initially). Accordingly, an entity with a registration in a foreign country may initially be better off than a resident, or citizen of the country of application, or a legal entity registered in the country of application, in that the resident, citizen or entity will need to show Trademark usage for all goods and services sought to be included in the Trademark registration, whereas a foreign applicant with a Trademark registration in another country may initially obtain registration solely based on the foreign registration and without proving use in a subsequent country of application prior to obtaining registration. However, the foreign registrant may have to show not only registration abroad but use abroad in order to qualify for this basis of registration in a subsequent country, depending on the laws of the subsequent country. Note that only a foreign registration may form the basis for Trademark registration and not a foreign Trademark application.
Substantially all Trademark applications go through a procedure called formalities or formalization as soon as a trademark application is filed, whereby the Trademark office of filing determines whether the Applicant has met the minimum requirements to obtain a filing date and a filing number. Checking the Filing Receipt or Filing Notice typically issued by the Trademarks office is important in that the filing date may serve as the basis for a priority claim in other countries, which claim for priority may be invalid if the filing date is found to be incorrect based on some technicality. However, the issue of a Filing Notice or a Filing Receipt in no way implies that the Trademark application complies with all other national or regional laws, nor that a registration will ultimately issue. All other requirements, other than formalities are typically dealt with during the examination stage of prosecution and not during the formalities stage of prosecution.
In some countries special rules apply to geographical indications in respect of a wine or spirit to identify the origin of a wine or spirit.
See heading ‘Wears and Services’.
It sometimes happens that a party who obtains a Trademark registration in a particular country, particularly in a common law jurisdiction, may not be the party with first use of a Trademark for competing goods and/or services. An earlier user may then apply to a court of competent jurisdiction to cancel the Trademark registration where the registrant’s entitlement date is after the date of first use of the other party. However, after a Trademark registration has existed on a Trademarks register for a certain period of time without challenge, the Trademark registration is often said to be incontestable. This incontestability sometimes takes place automatically and in other cases must be applied for. A typical period of time beyond registration through which a Trademark registration must subsist without a third party initiating legal proceedings for cancellation is five (5) years. Where incontestability is not automatic, a formal request, sometimes with proof of continued use, including the provision of specimens is required, together with an official fee. The concept of incontestability basically provides that unless a challenger can prove that the registrant was aware of the challenger’s conflicting prior use of a confusingly similar mark before the registrant adopted (commenced use of) the confusingly similar Trademark (which was subsequently registered) that the registration is incontestible. Prior to the commencement of incontestability, a challenger need only prove that it adopted a confusingly similar Trademark before the registrant in order to have the conflicting Trademark Registration cancelled or expunged, without proof of knowledge that the registrant was aware of the competing Trademark use. Accordingly, if a Trademark registrant knowingly commenced use of a Trademark confusingly similar to that of a competitor, and which can be proved, incontestability will typically not prevent a successful attack on the Trademark registration. However, as such proof typically would not be within the knowledge of the challenger, anticipating incontestability, and applying for same where necessary, is an important strengthening of a Trademark portfolio.
See Design Patent.
The terminology used in some countries to describe the three-dimensional configuration of the electronic circuits embodied in an integrated circuit product or layout. Some countries have legislation which specifically deals with this form of Intellectual Property and others do not. In some countries an Integrated Circuit Topography must qualify as an invention to be protectable under domestic patent laws failing which, protection may be unavailable. Given its overlap with patent laws, in some countries and/or regions, a public disclosure of an Integrated Circuit Topography may bar patent or related protection. An Integrated Circuit Topography would not usually qualify as a Trademark as indicating the source of goods or services as the visual features of a topography would not usually be visible at the time of purchase of a product.
The general term used to refer to creative and in tangible property primarily including patents (also known as utility patents), design patents (also known as industrial designs), Trademarks, copyright and integrated circuit topography as well as related areas including trade secrets, licensing and related litigation.
Many countries, but not necessarily all, allow Trademark applications to be filed on the basis of a future intent to use or proposed use of a Trademark in a particular country or region for a defined set of goods and/or services.In some counties, including Canada and the USA, a Trademark application based solely on intended or proposed use requires a showing of use for all goods and services sought to be included in the ultimate Trademark registration, before the registration can issue.Proof of use is often in the form of a statement, allegation, declaration, affidavit or similar allegation of use, which is often the equivalent of a sworn statement and, the falsification of which comprises an offence.In addition to such written allegation of use, Trademark specimens showing the Trademark actually in use in respect of some or all of the goods and services in the application sometimes must be filed with the Trademarks office.
Most countries in the world, but not all (most notably excluding Canada), categorize goods and services by International Class. The International Classification System is maintained by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland. Until recently, there were 42 International Classes and after which time there were 45 International Classes. Classes 1-34 have consistently been in respect of goods whereas classes 35-42 in respect of services was expanded to classes 35-45 in respect of services. In addition to this subdivision of the international service classes, various goods and services have been reclassified over time. Accordingly, care is needed both when searching Trademarks and in applying for registration in countries utilizing the International Class system. It is also important to note that even if a particular good or service is in a particular class, that the particular good or service may still form the basis of a confusion rejection by a relevant Trademarks Office to an application for a Trademark for goods and/or services which would be classified in a different International Class, although different International Classifications may be one factor to be considered when confusion between two competing Trademarks is assessed. Most countries charge Official Fees for filing, prosecuting, and registering Trademarks on an International Class by International Class basis. In some jurisdictions, each Trademark application may only be in respect of a single International Class, also adding to the cost of professional fees to prepare and prosecute several separate and distinct Trademark applications in the same country.
In most countries, an applicant need merely be a so called legal entity and not necessary an individual or a corporation being the equivalent of an individual.Most countries consider various forms of partnership to be legal entities for Trademark purposes, and in some cases, associations and other groups such as trade unions may also be considered legal entities.Various governments are also legal entities.Accordingly, partnerships for example, which would usually not be considered a legal entity separate and apart from its partners, is commonly considered to be a legal entity for Trademark application and registration purposes.Other than in respect of licensing, partnership is substantially the only standard exception to the general rule that there may only be one source of goods and/or services for a particular mark for a defined set of goods and services in a particular country or region.Accordingly, two individuals separately, not carrying on business in partnership, would typically not qualify as an applicant.This is one in a long list of technicalities which could render even an issued Trademark registration to be held to be null and void in a court of law, especially where the application has not been prepared and/or prosecuted by a Trademark attorney or agent.
Some countries, but not all, have historically onerous provisions for proving the validity of the various signatures required to file, prosecute and register Trademark applications.Powers of Attorney are typically required to be legalized.So called legalization typically includes a notary (who may be a Trademark attorney or Trademark agent) witnessing and notarizing the signature of an individual applicant, or the signature of an Officer of a corporation.The government body that licensed the notary is then typically asked to certify the signature, and sometimes the seal, of the notary as legitimate.The foreign government embassy or consulate of the country in which Trademark registration is requested then typically certifies the signature of the government official certifying the legitimacy of the notary’s signature.There may be one or more additional levels of approval depending upon the country involved.Legalization is accordingly a costly and time consuming procedure.Fortunately, many modern jurisdictions have abolished legalization as a precondition to the filing, prosecution or registration of a Trademark.
Trademarks, as well as other forms of Intellectual Property such as patents, design patents, industrial designs and copyrights may be licenced to one or more third parties. However, the licencing of Trademarks is fundamentally different from the licencing of other forms of Intellectual Property where the emphasis in licencing is with respect to actually what is being licenced, for what period of time and for what price. While these factors are important from a business point of view with respect to Trademarks as well, improper Trademark licencing where the use of one or more Trademarks is not strictly controlled can result in the cancellation or expungement of an otherwise valid Trademark registration, or other loss of Trademark rights. The typical fundamental concept behind a Trademark is that there is only one source of goods and/or services for a particular Trademark for a defined set of goods and/ or services within the entirety of a country or region. If two or more people or entities, other than in partnership or in another approved entity, are using the same Trademark for the same products within the same country, this destroys the fundamental requirement of a Trademark in many countries and the Trademark no longer operates as such. Licencing is important in a Trademark context in that the use of a Trademark within a particular country by a licencee is usually deemed to be the use of the licensor in that country. This supports the legal fiction that there is only one source of goods and/or services within a particular country, even if several licenced manufacturing facilities, that manufacture and sell similar products under the same licenced Trademark exist. However, unless these licenced uses are strictly controlled, the use of the Trademark by one or more licensees will no longer be considered the use of the Trademark owner or registrant and the fundamental required distinctiveness of the Trademark to the Trademark registrant will no longer exist and the related Trademark rights will no longer be protectable. This is in part for the protection of consumers who have come to expect goods or services of a particular character, nature or quality in relation to the Trademark. Not only do the terms and conditions of the licence need to be clearly delineated, which practically means that the terms and condition of the licence often need to be in writing, but also requires a licensor to physically supervise and inspect the Trademark use of the licencee on a periodic basis. In the absence of either of these requirements, Trademark protection may also be lost. Such supervising typically includes regular inspections of the Trademark licencee’s use, not only as to how the mark is physically represented, but also whether the character, nature or quality of the goods and/or services manufactured or rendered match those authorized by the Licence Agreement (whether verbal or written). Such inspections are often conducted quarterly and no less than yearly. Such inspections typically also include the obtaining and retaining of Trademark specimens (whether physical products, photographs or otherwise) as well as some evidence of satisfactory character, nature or quality of the goods and/or services being rendered. Accordingly, even if a Trademark is being licenced from one corporate member to another corporate member of the same group of companies, the same requirements with respect to licencing must be met. Accordingly, while registering a Trademark application in the name of the only company or corporation to use the Trademark does away with most, but not necessarily all, Trademark record keeping requirements, this would not insulate the Trademarks from forfeiture in the event of a bankruptcy or other business failure. Furthermore, this might simply not be possible for the mark to be successful if the mark will necessarily have to be used by third parties. Trademark owners also need to be vigilant in order to ensure that changes in the licencing of the Trademark are embodied in a current version of a Licence Agreement. A Trademark Attorney Agent can assist not only with the preparation of a proper form of Licence Agreement but may also provide practical advice with respect to the set up and maintenance of an adequate Trademark inspection and record keeping system.
The Madrid system of international Trademark registration established by the Madrid Agreement in 1891 and the Madrid Protocol in 1989, is centrally administered by the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland.Many, but not nearly all, of the signatories to the Paris Convention adhere to the Madrid Agreement and/or Madrid Protocol.One notable inclusion in the Madrid System is the United States and an important exclusion to the Madrid System is Canada.Basically, the Madrid System provides that once a first registration is obtained in a Madrid country, that an application under the Madrid System may be made in which case the Madrid application acts as an application in all Madrid System countries.It is then left to national or regional Trademark Offices to refuse registration based on national laws and/or for registered and unregistered Trademark users to monitor national and regional Trademark databases of interest and to oppose any Trademark applications conflicting with their own Trademark use and which the relevant national or regional Trademark Office has not already blocked.This places a much higher burden on Trademark applicants and registrants to monitor their own Trademarks and watch the Trademark registers, failing which their rights may be eroded or lost (see watching programs).
An Office Action, sometimes referred to as an Official Action is a written communication from a national or regional Trademark Office advising of various information and/or requiring action to be taken by the Trademark Applicant (and sometimes by a Trademark Registrant). The most common form of Office Action issues during the examination phase of the prosecution of a Trademark application and may contain objections to registration and/or required amendments necessary to proceed with the Trademark application. If an Office Action requiring a response is not timely responded to, the application usually go abandoned, often without realistic possibility of reinstatement, in which case the applicant’s filing date and priority date will be lost. In some countries such as the USA, such an examination report requiring action to be taken by the applicant is actually called and Office Action. Similar communications from other national and regional Trademark Offices may not be referred to by the title Office Action or Official Action and may in fact have no title whatsoever. The term Office Action or Official Action is also often used to refer to any written communication from a Trademark Office, whether it be a Filing Receipt, Publication Notice, Notice of Allowance or otherwise. All such documents are generically referred to by Trademark professionals individually and collectively as Office Actions, whether or not a response is required.
Although the term official fee or official fees are not used per se in Canadian or US Trademark legislation for instance, “official fees” is the common term used in must countries and generically referred to by Trademark professionals worldwide to refer to government fees required at any juncture of a Trademark application or registration as well as fees in relation to other forms of Intellectual Property (i.e. patents, design patents, industrial designs, copyrights, etc). Official fees are to be distinguished from professional fees which are the fees of Trademark attorneys, Trademark agents and other Trademark professionals.
The search performed by a national or regional Trademark Office, typically during the examination phase of prosecution, is typically referred to as an official search. One or more official searches may be conducted during the prosecution of a Trademark application. An official search is to be distinguished from a preliminary search, which typically refers to a search performed by a Trademark professional before the preparation and filing of a Trademark application, which preliminary search is typically not filed in a national or regional Trademark Office and usually remains a private matter between the Trademark applicant/registrant and the Trademark professional.
The term used to describe the phase of prosecution wherein a third party challenge has been filed with the national or regional Trademark Office objecting to the issue of a Trademark registration to the Trademark applicant for the requested Trademark in respect of some or all of the goods and/ or services set out in the Trademark application. A Trademark in an opposition proceeding which has been successfully defended will be returned to routine prosecution and a Notice of Allowance or Registration will issue in due course. An unsuccessful opponent will typically be given the opportunity to appeal before the Trademark registers. In the event that the opponent’s opposition is successful, and Trademark registration is refused for some or all of the goods and/ or services in the application The Trademark Applicant also typically has the right to Appeal within a set period of time. Opposition proceedings are in effect a form of litigation, highly technical in nature, and can be expensive depending on how long the opposition is pursued by both parties. Accordingly, the strongest deterrent to an opposition is a carefully prepared Trademark application which is properly prosecuted and resulting only in rights to which the registrant is legitimately entitled.
The terms used in some countries to designate that branch of the national or regional Trademark Office dealing with oppositions.An Opposition Board, or like body, however named, often has other responsibilities as well and may include appeals of various types depending on the country involved.
The Paris Convention, short for the Paris Convention for the Protection of Industrial Property, is a treaty between most (but not all)industrialized countries for the protection of intellectual property, including Trademarks, Design Patents, Industrial Designs, and Patents, whereby a Trademark Applicant in one country is entitled to the filing date of their first filed Trademark application anywhere in the world (in a Paris Convention Country), provided that corresponding Trademark applications for the same Trademark are physically filed in all desired Pairs Convention countries within six (6) months of the filing date of the first filed application anywhere in the world (see also Entitlement Date).
One of a number of common law remedies known as Torts typically enforceable by the ordinary Courts, and not necessarily in national or Federal Courts who hear legal disputes with respect to Intellectual Property based on legislation which is usually national and not regional, provincial, state or local. The Tort of Passing Off typically provides a remedy to the owner or user of a registered or unregistered Trademark for the Trademark where a user or owner can prove an established reputation in a provable area or region which may or may not comprise the entirety of a state, province or country. Remedies for passing off typically include damages for provable losses as well as a permanent injunction prohibiting further tort activity, at least in the proven area of established reputation. Legal proceedings against such third parties often include claims for relief under the common law of passing off as well as separately under Federal Trademark legislation for Trademark infringement per se and sometimes under related intellectual Property statues in respect of copyright and/or industrial design or design patent. The primary difficulty with passing off (as opposed to Trademark infringement of a registered Trademark) is that it places the burden to establish significant reputation upon the aggrieved party and to establish the boundaries of that reputation which may not be clear or easily provable.In contrast, a Trademark registration typically applies throughout the entirety of a country or region and Trademark infringement anywhere within the country or region become actionable.
While the term patent in some countries may refer to utility patents, design patents, plant patents and otherwise, the term patent alone, is usually synonyms with the term utility patent which is used to protect function as opposed to the non-functional look or appearance of an article of manufacture. A patent or utility patent is a means for protecting an invention which includes any new and useful art, process, machine, manufacture or composition of matter or any improvement for same. A plant variety denomination may also be protectable under various national laws either under a branch of patent law or under separate legislation relating specifically to plant breeder’s denominations.
In Canada, a plant variety domination is a monopoly granted upon application to control the multiplication and sale of reproductive material for a plant variety. In Canada these rights are granted under the Plant Breeders Rights Act. In the US, substantially equivalent protection is dealt with directly under the US Patent Act and referred to as a Plant Patent.
A word, phrase or design which is clearly descriptive or deceptively mis-descriptive of the place of origin of goods and/or services is usually not protectable per se, but a mark may be adopted in a way that may be protectable as long as the Trademark as a whole is not deceptively mis-descriptive which is typically not curable. A place of origin which is clearly descriptive may sometimes form a part of a larger Trademark which is registerable, often with the exclusive right to the place of origin being disclaimed (see Disclaimer).
A search usually conducted by a Trademark professional before preparing and filing a Trademark application and typically which is used as a guide as to what may and may not be permitted in order to assess the suitability of the mark itself and/or the goods or services which may properly associated with the Trademark. A preliminary search is usually a private matter between the Trademark professional and the Trademark applicant and/or registrant and which is typically not filed with a Trademark Office unless strategically advantageous to do so during prosecution. Production of such a private preliminary search may or may not be demanded by a Court of competent jurisdiction depending on local law. The search may be covered by solicitor and client privilege depending upon the country involved.
Often a second search is performed by a Trademarks Office prior to publication for opposition purposes and/or prior to registration in order to ensure that no further conflicting Trademark applications or registrations have been filed or issued. However, such searches, even if undertaken, often do not disclose applications with an earlier entitlement date and accordingly Trademark applicants and registrants should have their marks enrolled in a formal watching program with a Trademark professional.
With respect to Trademarks and Industrial Designs, the Priority Date under the Paris Convention for the Protection of Industrial Property (the “Paris Convention”), is the filing date of the first filed Patent Application anywhere in a Paris Convention country and the benefit of this earlier filing date is provided to any later filed Trademark application in another Paris Convention country for the same Trademark, provided that any such subsequent applications claiming such benefit must be filed within six (6) months of the first filed application, which six (6) month period is non-extendable.However, please note that the Convention period for Patens sometimes referred to as Utility Patents or True Patents is one (1) year and not six (6) months.
The fees and disbursements and taxes for Trademark services rendered by Trademark attorneys, Trademark lawyers, Trademark agents, other than official fees actually payable government Trademark Office.
Prohibited marks are an expanded form of Trademark protection granted under the Canadian Trade-Marks Act for various specific marks and symbols and in particular, including any badge, crest, emblem or mark adopted by the Canadian Department of Nation Defence, any university, or any public authority in Canada, as an Official mark for wares or services. Once a Prohibited mark/ Official mark is applied for, in the Canadian Trade-Marks Office, it is immediately protected upon publication in the Canadian Trade-Marks journal. The Prohibited mark or Official mark is not examined and remains a Prohibited mark or Official mark in definitely until when and if the mark is withdrawn by the owner of the mark. Prohibited marks/ Official marks do not need to, but may specify wares and services, but regardless of whether wares and services are specified or not, the Prohibited mark/ Official mark covers all wares and services. Accordingly, a Prohibited mark/ Official mark cannot be distinguished from another mark by the definition of wares or services in a competing regular or non- Prohibited mark or non Official mark, nor can the Prohibited mark/ Official mark be distinguished by channels of Trade as wares and services of all types may travel in all channels of trade. Accordingly confusion between a regular Trade-Mark and a Prohibited mark/ Official mark is limited to the degree of resemblance between the two marks alone regardless of wares and services and regardless of channels of trade. However, it is believed that the Canadian Trade-Marks Office does not go out of its way to broadly interpret such Prohibited marks/ Official marks given the broad protection already enjoyed by them.
The term sometimes used to describe the status of the prosecution of a Trademark application where a prospective Trademark opponent has requested an extension of time within which to potentially file a Statement of Opposition. This period of time before a formal Statement of Opposition, including grounds of opposition must be filed is often used to investigate further whether an opposition is warranted and often to initiate settlement discussions which may result in the Trademark application being voluntarily and intentionally abandoned or may result in various goods are services being deleted from the Trademark application.
The term used by Trademark professionals to refer to the processing period between the filing date of an application and the date of registration of a Trademark. The term prosecution does not infer that a Trademark applicant has done anything wrong or that the use of the Trademark or filing of the Trademark application is in anyway improper. Nor does the term prosecution even imply that a Trademark application has been opposed. It is merely the term used to describe the processing period of a Trademark application and the word prosecution may be used interchangeably with the term processing.
In most countries, Trademark applications which have been approved by the national or regional Trademark Office then proceeds to publication in a government publication gazette or journal. Third parties who typically watch various Trademark registers and government publications in which through their Trademark professionals use this information to advise their clients as to potentially competing marks and to advise with respect to the potential filing of a Statement of Opposition. it is not uncommon that Trademark applications approved by a national or regional Trademarks Office will still dilute the rights of other Trademark owners and/or otherwise be contrary to the interests of other Trademark owners. Publication or advertisement of otherwise government approved Trademark applications is performed almost universally for a reason and Trademark owners should be appropriately watching these publications as a part of protecting their Trademark rights. However, certain Trademark applications are not published or advertised as certain other forms Trademarks or official marks although published or advertised may not be opposed.
A Trademark application which is prosecuted successfully through examination and through publication or advertisement without an opposition being logged typically results in either a Notice of Allowance or may proceed directly to registration. Should there be any preconditions to registrations typically a Notice of Allowance will issue in which case the preconditions to registrations once met will allow the applicant to request registration. A successful prosecution typically ends with a document entitled Certificate of Registration or a similar title which ends the prosecution period. A Certificate of Registration should also be checked in order to ensure that it properly records all rights which have been granted to the Trademark applicant and includes no rights to which the registrant is not entitled. In some jurisdictions the inclusion of even one right in a registration, to which the registrant is not entitled, may result in the entirety of the Trademark registration being held null in void by a court of law. Due to this sometimes harsh standard Trademark professionals will review the rights available to a Trademark application prior to the filing of the application through prosecution an in particular before registration. However, even is an error is discovered after registration it is often possible to correct the registration typically before a Trademark registrant is caught “red handed” so to speak.
A Trademark which has been successfully prosecuted becomes a registered Trademark which is typically entered in one or more official Trademark registers listing Trademarks that have afforded registered trademark rights.
The conditions of renewal may or may not be set out in the Certificate of Registration and if so, such conditions, including the time period within which a Trademark registration must be renewed, and the renewal fee may change without notice. The time period between renewals is typically the same within each individual country, but they need not be. Certain countries also have additional quasi renewal requirements which are in effect a form or renewal but not referred to as such. These may include requirements to file documents entitled Affidavits of Continued Use and the like. Renewals per se may simply renew the registration in the form in which it originally registered, or as previously amended, or the renewal procedure may require proof of continued use of the Trademark in respect of each and every good and service in the registration, failing which the goods and services no longer in use in association with the Trademark must be deleted from the registration, failing which the entirety of the renewal may be attackable in a Court of competent jurisdiction. A Trademark which is not renewed may be referred to as not renewed or may be referred to as cancelled or expunged, although other forms of cancellation and expungement may exist. A Trademark registration may be cancelled or expunged earlier and other than for non-renewal including abandonment of the Trademark or lack of use of the Trademark for a given period of time, often but not always three years. Accordingly, it is useful to periodically review the use, or lack thereof, of all Trademarks in a portfolio to determine Trademarks at risk of cancellation or expungement at the mere request of a third party and sometimes the national or regional Trademarks Office itself. Trademark registrations may also be cancelled or expunged where the pre-condition of Trademark use, such as distinctiveness, no longer exist. Such challenges, may come in response to infringement proceedings, or otherwise.
See heading ‘Wares and Services’.
The term used to refer to a mark associated with the rendering of services only and not goods. However, the term Trademark is often used generically to refer to a mark in respect of good and/or services. Legislation in certain countries refers specifically to service marks and in other countries it does not.
Other than a request for an extension of time within to potentially propose, the document which starts and opposition proceeding. A Statement of Opposition typically must include the precise ground for opposition. Unless a response document is filed in response to a Statement of Opposition, such response document sometimes being referred to as a counterstatement, result in the Trademark application going abandoned.
The term Trademark is often used generically to refer to a mark in respect of good and/or services.
A Trademark Agent or Trademark Attorney is a Trademark professional licensed in a particular country or region to file and prosecute Trademark applications, and sometimes pursue Appeals, before national or regional Trademark Offices. In some cases Trademark professionals must be attorneys in which case they may be referred to as Trademark Attorneys. In other countries licensed Trademark professionals are referred to as agents. In many countries Trademark Agents may be, but need not be, a lawyer or attorney in addition to being a Registered Trademark Agent. In some counties a firm of Trademark attorneys and/or agents may itself be a Registered Trademark Agent with a separate registration number.
In some countries where a Trademark application is filed in respect of a design mark, and not a word mark, the design mark must be submitted not only in the Trademark application itself, but in separate Trademark drawings showing the same mark as in the Trademark application. Of necessity, one or more of the Trademark drawings must usually be identical. Trademark drawing must not be confused with Trademark specimens which are representations showing the Trademark actually in use. Trademark drawings, if required, are typically due with the original Trademark application. Whether providing Trademark drawings is a formal requirement obtaining a filing date is a technicality which should carefully be considered on a country by country.
The use of a Trademark by a third party confusingly similar to the Trademark contained in a Trademark registration for the same, similar or related goods and services is commonly referred to as Trademark infringement exposing the third party to civil liability and granting various remedies to the Trademark registrant often including damages for loss profits, and/or an accounting of the infringers profits, a permanent injunction against further Trademark infringement, delivery up and/or destruction of infringing product, legal costs and interest, depending upon the country involved. The third party may also be exposed to liability under the common law of passing off where applicable. A third party may also expose to liability under various other Intellectual Property Law statutes including in respect of copyright, design patent or industrial design.
That branch of government or government department in a particular country or region responsible for processing Trademark applications in that country or region.
The one or more registers in a country or region in which Trademark registrations are entered. However, pending Trademark applications and even abandoned Trademark applications and cancelled or expunged Trademark registrations also appear on the Trademarks database of a particular country or region, and which is typically accessible either in person at the actual Trademark Office and sometimes over the internet depending on the country involved. However a Trademarks database is not to be confused with one or more formal Trademark Registers. Where more than one register exists, the difference between the various registers should be noted. For example, the United States maintains two Federal Trademark Registers: (1) the Principle Register for regular enforceable Trademarks and; (2) a Supplemental Register for non-enforceable descriptive Trademarks. However, even Trademarks on the Supplemental Register may be cited against other applications. Further, descriptive Trademarks on the Supplemental Register may obtain what is called acquired distinctiveness over time and such Trademarks may subsequently form the basis for an application upon the Principle Register assuming the requirements of the Principle Register registration can be met.
Trademark specimens are samples showing how a Trademark has actually been used in a particular country or region. Trademark specimens may be actual items where the goods are paper goods or the specimens may be the actual labels applied to the goods or their containers or may be the boxes or other packaging actually used in the country or region. In the case of specimens which cannot be laid flat, such evidence is typically in the form of a photograph or photographs showing the actual use of the Trademark. Trademark specimens may be required with the original Trademark application where the Applicant alleges that the Trademark has already been put into use in the country or region of application with some or all of the goods and services in the application. Alternatively, where the Trademark application is wholly or partially in respect of future intended or proposed use, a Statement of Use, Declaration of Use or Affidavit of Use is typically required before the Trademark is registered with respect to those goods and services which were not put into use before the Trademark application was filed (at least in countries where proof of use is required prior to registration, at least in respect of the intended or proposed use basis of registration).
One or more Trademark specimens may be required with respect to each and every good and service in the application originally based on intended or proposed use, or specimens may only be required for one or more goods or services in a particular international class. Once minimum specimen requirements have been met, all additional specimens may not be reviewed or approved by a particular Trademarks Office. Accordingly, the review and selection of specimens is an important part of a Trademark application and/or Trademark prosecution, sometimes onerous if the Trademark application has a lengthy list of goods and/or services. Trademark specimens in respect of services typically comprise advertising services to advise the indicated services and which advertising may have to be physically displayed during the course of physically rendering the services associated with the Trademarks sought to be registered.
A sole proprietorship, partnership, corporate or business name, under which an individual, individuals or a company operates.A trade name may or may not also qualify as a Trademark depending on how the name is used.
Trade secret knowhow which is not included in a patent application which would otherwise become public, or included in that potion of a copyright application which would be open to public inspection and which has otherwise not been publically disclosed and has been treated as confidential by the trade secret owner for each subject matter may typically form the basis of a valid confidentiality agreement. Business owners may, for a variety of reasons, elect to treat various knowhow or inventions as trade secrets rather than apply for various types of Intellectual Property law protection for various reasons including the fact that the subject matter of patent applications will eventually become public, that a patent application may ultimately not result in an enforceable patent registration, the anticipated life span of the subject matter and the time necessary to obtain a patent registration, the practical likelihood of piracy if the trade secret was revealed, whether or not protected by patent or otherwise, the cost of pursuing Intellectual Property protection or other reasons.
A Trademark owner may elect to adopt and use an unregistered Trademark for several reasons including the unregisterability of the mark for various reasons other than confusion with another unregistered or registered Trademark, the length of time the unregistered Trademark is required as compared to the time required to obtain a Trademark registration. A Trademark owner may not realize that their Trademark application has gone abandoned or that their Trademark registration has been cancelled or expunged, the likelihood of opposition or other challenge if registration is applied for, etc. However, unregistered Trademarks do not enjoy the benefit of registered Trademarks (see Benefits of Trademark Registration).
Trademark applications and registrations usually limit the anticipated or actual protection of the mark to the defined wares and services ultimately included in a Trademark registration. Unlike in copyright where a protected work is covered for any use preventing copying of the mark, Trademark protection although not requiring provable copying before infringement is found, only provides protection for the Trademark for the defined wares and services. However, a Trademark registration will typically also bar a competing use for a confusingly similar Trademark, not only for the wares and services defined in the Trademark registration, but also in respect of related wares and services sold in similar channels of trade as the wares and services set out in the registration. Accordingly, while a Trademark registration may actually be broader than only the precise wares and services set out in the registration, a Trademark registration is often sought for related wares and services, sometimes in a follow up application or applications, as it is significantly preferable to have the exact wares and services being sold defined in a Trademark registration to avoid any ambiguity as to coverage. This is especially so if the wares and/or services in the original registration have fallen out of use and the wares and services specifically defined in the original registration may be subject to cancellation or expungement. Wares are also referred to in some countries as wares, and for most, but not all purposes, the two terms may be used interchangeably.
A formal or informal program, typically implemented by a Trademark professional before or after Trademark registration which alerts a Trademark owner of competing marks and applications confusingly similar with the registrant’s existing Trademarks for similar goods and services conflicting with future intended or proposed use of the Trademark for expansion of the product or service line or lines, which may prevent or reduce future expansion of the mark, which may dilute the breadth of the registrant’s current Trademark registrations and/or which may ultimately result in the registrant’s goods and the applicant’s goods, under the same or confusingly similar Trademarks, from no longer being distinguishable from one another and which may result in the loss of Trademark rights for both the registrant and the applicant. Watching programs may be as informal as a Trademark professional or a Trademark clerk or assistant periodically reviewing the lengthy government list of published or advertised marks for opposition purposes or the lengthy lists for Trademarks identical to or confusingly similar with Trademarks that the reviewer recalls. This 19th and 20th century approach to Trademark watching although still prevalent in many countries and firms is wholly inadequate given the global explosion in Trademark interest.The frequency with which Trademark professionals and assistance change firms or retire the length of time between Trademark renewals (often from 10 to 15 years or more between renewals) and fading memories given the computerized tools available today for Trademark watching.Trademark watching programs may be implemented in a number of ways.Watching programs may be programmed to watch for a defined set of search parameters.A watching program may also include several different searches, all being watched simultaneously, and all with different parameters.Records meeting the watched criteria are periodically forwarded to the Trademark professional, typically by e-mail, either daily or weekly given that the periods within which an opposition must be launched may be as little as one month from publication or advertisement to as much as nine months or more from publication or advertisement, depending on the country or region involved.Watching programs are typically invoiced on a yearly basis on a per country per Trademark basis although various Trademarks may be combined.A proper watching program is one of the few expenses a Trademark registrant should expect on an annual basis between the time of Trademark registration and the time of Trademark renewal.Failure to adequately do so may result in the loss of Trademark rights, sometime irrevocably.
The term used by Trademark professionals to describe a Trademark consisting wholly of letters, numbers and sometimes special characters in one or more official language of the country or region of application including words in a foreign language, but using the same letters and numerals as an official language of the country or region of application where such marks do not contain any design element including artwork, graphics or even a particular font applied to letters, numbers or permissible special characters. The character sets of various languages which are considered eligible for word mark treatment is established on a country by country or region by region basis. Whether special typewriter symbols may be treated as part of a word mark, or not, is also determined on a country by country basis. Accordingly, in some cases, the addition of a particular special character may render the Trademark a design mark rather than a word mark because protection afforded to design marks is somewhat limited by the design features of the mark, word marks are typically stronger than design marks although design marks are also important pieces of protection, especially where word mark protection is not available for various reasons. The typical order in which Trademark protection is often sought is as follows: (1) word mark for the actual product or service name, (2) a word mark for an umbrella brand or subset of a trade name where the company name is not the same as the product or service mark (although items 1 and 2 depending on the level of importance); (3) a logo with or without letters, numbers or special characters in black and white format which typically protects the design mark in all colours; (4) a word mark for a tag line or a slogan and; (5) any of the above were colour should be claimed as an important part of the mark.