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What Is A Trademark?
A trademark is a sign which can distinguish your goods and services from those of other traders. A trademark can include words, logos, pictures, or combination of one or more of them. It will become a 'brand' by which customers recognise your products or services. To protect your mark from being used by third parties it must be registered in the place where you conduct business. While a Trademark prevents others from using a confusingly similar mark, it cannot prevent others from making or selling the same products under a totally different mark.


What are examples of types of mark that can be registered?
Typically, registered trade marks are words (e.g. Coca Cola), devices (e.g. the Nike flash, the NatWest logo, or the Bass triangle) or stylised word marks (e.g. the particular way of using Coca Cola on the side of a Coke can or the particular way of using the RR logo on the radiator grille of a Rolls Royce motor car). However, in theory, anything which can be "graphically represented" might be registered. Shapes (e.g. the Chanel 5 bottle, and Coca Cola bottle), sounds (e.g. the "Intel sound" or the "Hamlet music"), and colours (e.g. a particular colour of green in respect of BP petrol stations) may now be registered.


What are the benefits of registering a mark?
Securing a trademark registration provides exclusive rights to prevent unauthorized use of the trademark. The main benefits of registering a trademark include:

1. Gives a scope and protection to the mark and its usage within the country of registration;
2. Grants the right to use the ® symbol that may deter potential infringements. Use of the ® symbol before your mark is registered is illegal.
3. Acts as a public notice and offers a legal presumption on the ownership as well as the exclusive rights to use the mark.
4. Gives the right to sue for infringement in court.
5. Helps to obtain registration in foreign countries by using the priority date.
6. Provides a tool to stop cybersquatters from taking your mark for a domain name
7. Registration can be obtained before the Mark has been used as long as there is genuine 'intention to use' the Trade Mark.
8. In the U.K., avoids a costly 'passing off' action in most circumstances.
9. In the U.S., it helps to prevent importation of infringing foreign goods by filing the U.S. registration with the U.S. Customs Service

When can I use the "TM" "SM" or "®" designations?
TM and SM stand for "Trademark" and "Service Mark", respectively, and have essentially the same legal effect. TM is used with goods or services while SM can only be used with services. You can use the "TM" or "SM" designation at any time in any place. You cannot use the "®" designation until your trade mark is registered. Use of the "®" designation where you do not have a registration is a criminal offence and may result in a fine.


Does a Registered Trademark offer worldwide protection?
No. Registered trade marks are limited territorially. Therefore, for example, a UK registered trade mark only gives rights to the owner in the UK, whereas a Community Trade Mark (CTM) gives the owner rights throughout the European Union (which of course includes the UK). The application procedure for a UK registration differs from a CTM application.


I have a limited liability company and a registered domain. Why do I need a trademark?
Having a limited liability company name that contains the name under which you trade or a business name registration does not provide trade mark protection. Neither does a domain name registration.


I want to register both a word(s) Trade Mark and also my company logo, do I need two Trade Marks?
Yes.


Can I register my domain name as a trademark?
Yes, provided the domain name is used to provide a unique and distinct image and identity to your products or services. Simply registering your domain name does not mean that the domain name is protected as a trademark.


Is a "trademark" the same as a "trade name"?
No. A "trade name" is a name an owner uses to identify his or her business and is usually the full name of the company. It normally ends with Inc., Ltd, etc. A "trademark" is used to identify a good or service a business provides. Unlike trademarks, "trade names" are not registered with the trademark office, but with local government, primarily in the state or county in which the business operates. However, upon meeting the required criteria, a trade name can also be registered as a trademark or service mark.


Do I have to be a U.S. citizen to apply for a trademark in the U.S.?
No. However, if you do not reside in the United States, the name and address of your must appoint a "domestic representative" as part of the application process. The details of this domestic representative should be furnished as the address for correspondence when the application is filed.


How Long Does a Trademark Last?
A registered trademark lasts 10 years, provided that it is properly maintained. If properly maintained, trademark rights can last indefinitely.


Can I apply for a registration of the mark without actually using it?
Yes. In the U.K. and the CTM, you must have a genuine intent to use the mark in the future although it is not necessary to show proof of usage when applying for a renewal. In the U.S, you can file for registration on the basis of intent to use. 'Intent to Use' suggests the bona fide intent of the applicant to use the mark in commerce in future and that the mark is not in use now. If the application is filed based on the 'intent to use', the actual use of the mark should begin before the USPTO registers the mark. The applicant will have to file the 'Allegation of Use' form to establish the legitimate usage of the mark in commerce.


The Trademark Application Process in the United Kingdom and Europe.
Trademark applications in the UK normally take about 6 to 9 months to become registered. Community Trademark (CTM) applications, which cover the whole of the European Union including the UK, currently take about 12 to 24 months. During their examination, searches are made by government searcher to locate any prior applications/registrations in conflict. The UK office may object on the basis of such marks. The CTM office will not. However, in either case, the distinctiveness of the mark will be examined, and third parties will have an opportunity to oppose later, even if the mark is accepted by the government examiner. Oppositions by third parties can become rather entrenched especially on CTM applications. However, so long as a CTM application does not run into objections of this nature, even though it is somewhat more expensive than a UK application, it is a very cost-effective way to obtain registration rights covering the whole European Union.

A high proportion of the countries of the world have trade mark registration systems. It is now procedurally possible, once a home application (e.g. a UK or CTM application) has been filed, to file one International trade mark application to protect quite a wide spread of countries, including potentially important markets such as the EU, Japan, USA and Australia.


The Trademark Application Process in the United States.
Once your application is filed with the PTO, the PTO will issue a filing receipt. Once filed, the PTO takes anywhere from 10 to 18 months to process your application for registration. However, the most important date is the filing date, if registered, protection dates back to your filing date. During the application process, you will be provided with routine updates on the status of your trademark and are encouraged to contact us.

The trademark examining attorney will examine the application and may issue what's called an office action requesting changes to the application. If these changes are insignificant we will authorize them and inform you of them. If the changes are significant, we will consult with you to determine a course of action. Once the application has passed the examination phase, the mark will be published in the Official Gazette. Publication in the Official Gazette gives interested parties an opportunity to file a Notice of Opposition or request for extension to file a Notice of Opposition. If there is no opposition or the opposition is unsuccessful, the PTO will issue a Certificate of Registration. For an intent to use application, the PTO will issue a Notice of Allowance. Within 6 months of the Notice of Allowance, a statement of use must be filed. Once the Notice of Allowance is accepted, the Certificate of Registration will issue.


What is an opposition under the UK Trade Mark application?
The UK Patent Office checks whether or not other companies or individuals have registered similar marks (conceptual, aural and visual similarities). If the Patent Office's objections can be overcome, then the application is published in the "Official Journal". This allows the public to oppose the application for a period of 3 months. If your the mark is challenged by way of opposition, then there will be an official arbitration process (called an "Opposition"). Most oppositions are settled before they become confrontational. In May 2004, new procedures were introduced to make it possible to challenge the validity of trade marks used by owners to oppose new applications by requesting that those owners prove that they have used their mark in the last 5 years.


What is the difference between a United States Registrations and a European registration?

1. A United States federal registration covers the entire U.S.; the European mark covers the entire European community.
2. In the U.S., state or common law rights can be the basis of an opposition or cancellation preventing acquisition of a registration; rights acquired under the law of a member state of the Community mark can be the basis of a valid opposition preventing registration of the mark.
3. In the U.S., state law registrations can be either based on use or intent to use; national registrations in Europe generally need not be based on use.
4. In the U.S., enforcement must be in federal court; enforcement of community mark is limited to those designated by member states.
5. Cost of the Community mark is very expensive compared to US registration, however, less costly if registration of several countries is contemplated. Also, cost becomes reduced in relationship to the cost per class if a multiple class application is filed.
6. Like most domestic trademark offices, OHIM can refuse to register a mark if it is deemed inherently unregistrable ("absolute" grounds for refusal), for example, a mark which is the generic name for the pertinent goods. However, unlike many countries (including the US), OHIM will not, at the outset, refuse to register a mark on the grounds that it conflicts with a mark already registered or pending in the Office or in one of the EU member countries. Rather, it will notify the applicant and the owner of the prior application or registration of the potential conflict and afford the senior party an opportunity to initiate an opposition proceeding (the applicant can also withdraw its application at that point).