You have your new logo and are now thinking about trademarking it.
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Maybe you have heard about trademarks but are not sure exactly what they are and what they can do for you. Let us provide you with some background information and practical guidance to help you better understanding how to trademark a logo. Of course, this article is for general information purposes only and is not legal advice. You should consult a qualified trademark lawyer when it comes to trademark issues, as we will further explore below.
What is a Trademark?
A trademark is often used as another word for a “brand”. For example, “NIKE” and “COCA-COLA” are obviously brands, but they are also trademarks. They are also trademarks because the owner of the brand has “trademarked” its brand to get legal protection. The legal protection usually means that nobody but the trademark owner can use the trademark for the same kinds of goods and services, and sometimes no one can use it for anything at all, as we will explain more below. Often people confuse a “trademark” and a “copyright”. Generally, a trademark protects a brand name, whereas copyright protects original content, like a book, movie, or photograph.
Word Marks and Design Marks
Trademarks usually come in two primary forms, “word marks” and “design marks”. A “word mark” is a trademark that consists of a word or words, like “NIKE” or “COCA-COLA”. A design mark usually consists of a graphical element alone or in combination with words, and is often referred to as a “logo”. So for example, Nike’s “swoosh” logo, with a graphical element alone, is trademarked:
As is Coca-Cola’s logo, with a combination of a graphical element and words:
What does a Trademark do?
A trademark gives the trademark owner a kind of monopoly over a particular brand. For example, since Nike, Inc. has a trademark for its brand, “Nike” and for its “Swoosh” logo for athletic shoes (for example), nobody else is permitted to use that brand for athletic shoes or something similar. In fact, Nike is such a famous brand, it is unlikely that anyone would be able to get a trademark for “Nike” even in connection with something totally different, such as a brand of fertiliser. Nevertheless, sometimes there is room for two trademarks, each owned by different companies, to co-exist alongside each other for different goods and services. So for example, there can be a Delta airline and a Delta faucet company, each owned by different companies and not confusing the public.
Once trademark rights are acquired you can prevent someone else from using the same or confusingly similar trademark for the same or similar goods and services. So for example, if someone decided to adopt Nike as a brand for flip flops, Nike would have the right to sue them for “trademark infringement” and prevent them from continuing to use an infringing brand name. Accordingly, having a trademark enables a brand owner to prevent others from copying its brand name and from confusing the public about the source of the particular goods and services. Nike has invested a lot of money in their brand name through advertising and marketing, and they should have the right to prevent someone from unfairly capitalising on their brand by selling something under the famous Nike name.
Not only do trademarks prevent someone from adopting an identical match, but can also sometimes prevent someone from adopting a confusingly similar trademark. For example, Starbucks took Sadarbuksh in India to court over an allegedly similar logo:
Registered Trademarks and Common Law Trademarks
Trademark rights can come is two primary legal forms; registered trademark rights and common law trademark rights. A registered trademark refers to the trademark owner having its trademark recorded in a governmental database of registered trademarks. Once registered, the registration certificate is proof of having trademark rights.
Common law trademark rights arise when the brand owner has not registered its trademark, but has used the mark to such an extent that for all intents and purposes, it has acquired more or less equivalent rights and is able to prevent others from passing themselves off as the brand owner.
Registered trademark rights are regarded as generally superior to common law trademark rights, because common law trademark rights owners have to prove they have acquired common law trademark rights, whereas registered trademark owners can rely upon the registration itself as proof of their rights, making it much easier to enforce trademark rights and to prevent infringement.
Some things Can’t be Trademarked
There is a whole body of law about what can and can’t be trademarked, but one of the most common misconceptions is that you can trademark a generic or descriptive term. For example, you can’t trademark APPLE for a brand of apples (the fruit), because that would be unfair since it would effectively remove a common generic word from usage by the public. However, you can of course trademark APPLE for computers, because APPLE is not the generic or descriptive term for computers. Accordingly, care must be taken to avoid adopting a generic or clearly descriptive term as your brand, as you may not be able to get it trademarked.
How to Trademark Your Logo
Once you have created a unique logo, you can consider trademarking it. The following are some of the steps that are commonly taken in trademarking a logo.
You need to consider not just how to trade mark a logo, but also where do you want to trademark your logo. One of the first decisions to make, is where you want to trademark your logo. There is no way of trademarking a logo for the entire world, all in a single step. You have to trademark in particular countries, such as the United States or Canada. You can also file across the European Union, or after filing a trademark in a single country, apply for a WIPO trademark which can sometimes make it easier to trademark in numerous additional countries.
So, generally you would determine where you plan on doing business, and start there. Having a trademark in one country will not generally assist you in preventing infringement in another country where you do not have trademark rights.
Once you identify where you want to trademark, for example, for the United States, you can search the USPTO database. What you would be generally be searching for, is to see if anyone else has a logo that contains similar words or a similar graphical element that could be considered confusing. in Canada, you can conduct a search of the Canadian Intellectual Property Office’s database of registered trademarks. Many countries have searchable databases that are accessible online for free. There is also the WIPO Global Brands Database that searches across many different countries all at once. A trademark might be confusing, for example, if the brand name was the same or similar and also related to similar goods or services, or if for example, the graphical elements were the same or similar and related to similar goods or services.
Trademark searching is something of a skill as it takes training and experience to conduct a good trademark search. That is why it is often advisable to seek the assistance of a qualified trademark lawyer who can help with conducting such a search.
The Application and Registration
Once you have completed your search, you may be ready to apply for a trademark in your desired jurisdiction or jurisdictions.
Applying for a trademark in many jurisdictions, involves filling our online forms and paying certain fees. The kind of information that you will be required to enter usually includes things like the identity of the applicant, a description of the trademark, and a description of the goods and services. Although these forms may appear simple to fill out, having the guidance of an expert trademark lawyer is often advisable, as it often takes experience and training to know how to properly describe your goods and services and to be on the lookout for other legal issues that commonly arise during the process. Most trademark registries will review or “examine” the application, conduct searches for confusingly similar marks, and then will either approve your application, request changes to it, or raise objections for a variety of reasons. These are often referred to as “office actions”. Responding to office actions may be as simple as changing a word here or there in your description of goods and services, or may be complex and require legal research and arguments.
The timeline for the process can often take months or years depending on the jurisdiction, and there is often an opportunity for third parties to oppose your application, for example because they believe your trademark is too close to theirs or they started using theirs first. Once approved however, you will usually receive a trademark registration certificate, and that means that you can usually start identifying your trademark with an ® instead of a ™, which usually means that you are asserting trademark rights but have not yet registered the mark and therefore cannot use an ®.
Written By Zak Muscovitch of Muscovitch Law P.C. You can read more about Zak and his services for Canadian and United States trademark at http://www.trademarks-canada.com/ and you can contact Muscovitch Law for fast and reasonably priced trademark services, including Canada, the United States, and worldwide