If You Plan To Do Business Internationally, You Should Consider an International Application for Registration of a Trademark under the Madrid Protocol

In a recent post, we discussed a Community Trade Mark (CTM), and how it allows a trademark applicant to have protection within all countries of the European Union (EU).  When filing a Community Trade Mark, it can be done through The Office for Harmonization in the Internal Market, also known as OHIM.  However, that is not the only option.

The Madrid Protocol allows a trademark owner to file an international application for registration under the Madrid Protocol.  This can be done through the United States Patent and Trademark Office (USPTO) as long as the applicant is a national of the United States, a domicile within the United States, or has a real and effective commercial establishment within the United States.  The benefit of such an international application is that there is one filing fee, the CTM Trade Mark through the EU is an option, and all other members of the Madrid Protocol can be selected in order to give you protection in each of those countries. 

Trademark Auditing is More Important than Ever: Trademark Registration Requires a Lot More than Simply Filing with the USPTO

The United States Patent and Trademark Office, like most government offices, survives on the accuracy of its data.  Trademark applications and other submissions to the USPTO are expected to be accurate.  A simple mistake in the listing of goods and services can be seen as perpetrating a fraud on the USPTO and will completely invalidate an application, even where the other listed goods and services were not affected by the mistake.  This makes trademark auditing an extremely important part of any trademark holder's intellectual property protection strategy.  Trademark auditing is an evaluation of a company or individual's marks to ensure that those marks remain accurately registered in association with the correct classes of goods or services.  Failing to accurately register or monitor your marks can result in losing one of your most valuable assets: the goodwill associated with your trademark.

Trade Name vs. Trademark: TTAB Clarifies the Difference Between Words Used to Describe Products and Services and Those Indicating a Business Name

When the public speaks colloquially about trademark law it often refers to all types of words or marks as “trademarks.”  But not all words qualify as trademarks.  A trade name, the name under which a business operates, can often be registered as a trademark, but the use of a trade name alone is not enough to protect others from appropriating that mark.  Businesses often believe that they are protected from the misappropriation of their trade name just by virtue of its use, but the Trademark Trial and Appeal Board has held differently.

Filing an Intent to Use Trademark Application with the USPTO

All too often clients seek to have trademark filed with the USPTO even though they have yet to meet the requirements needed to legally file a trademark application, let alone achieve trademark registration.  More often than not, the applicant has not established a use in commerce for its trademark quite yet and simply hopes to file an Intent to Use trademark application in order to buy time (six months until an Amendment to Allege Use must be filed) during which the applicant can begin to produce the goods, offer the services, or simply prepare the mark.  With priority being so important, it is not out of the realm of possibility that applicants become overly aggressive in their filings.

Register Trademark For a Catchphrase: Protect Your Brands

A catchphrase is an expression usually popularized by continued use by individuals or fictional characters.  A catchphrase, like a word or design, can be  trademarked and entitled to the same protection as such popular trademarks as NIKE and their SWOOSH.  Catchphrases have become yet another valuable trademark for companies and individuals alike. 

"Traverse Legal's attorneys know trademark law and pride themselves on advanced trademark registration techniques which are both cost-effective and budget oriented.  Because we are a boutique litigation law firm, we know how to strategically and efficiently accomplish our client's goals. "

If you have a trademark issue, or wish to register a trademark, you may contact one of our trademark attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Here is a list of some well-known catch phrases as reported on by Caroline Donnelly here.

Arbitrary / Fanciful & Registered Trademarks Likely To Be Protected By Courts

When branding your company and product, always remember that a strong trademark, one that is arbitrary or fanciful, is more likely to be protected by the courts.  Of course, registering your marks with the USPTO also provides considerable advantages as illustrated in the J&B case analyzed below.

J&B Wholesale Distributing, Inc., a Minnesota corporation, Plaintiff, v. ReduxBeverages, LLC, Redux Inc., Redux, LLC, and James Kirby. Defendants.Civil No. 07-4570, UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MINNESOTA, 2007 U.S. Dist. LEXIS 93586,  (December 20, 2007).

Ownership/Validity of the Trademarks: J&B has submitted documentation that it has obtained federal and state registrations for the marks No Name(R) and No Name Steaks(R). Under the Lanham Act, registration constitutes prima facie evidence of ownership and validity. 15 U.S.C. § 1057(b). Redux does not appear to challenge this element of the infringement  claim. Accordingly, J&B has met its burden of demonstrating that the marks are entitled to protection.

Searching for Registered Trademarks

It is advisable to conduct a search of the office records before filing an application. A search for pending, registered and dead trademarks may be conducted on the USPTO website using the Trademark Electronic Search System (TESS) or by visiting the Public Search Facility located on the first floor of the Madison East building at 600 Dulany St., Alexandria , VA 22313 between 8:00 a.m. and 8:00 p.m.

Also, certain information may be searched at a Patent and Trademark Depository Library (PTDL). If you need assistance in searching for trademarks, our attorneys, specializing in trademark law, can help.

Contact an attorney for a free consultation.