Things you should know before trademarking a logo

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Things you should know before trademarking a logo

• Here, in this blog we will come to know about
  things you should know before trademarking a logo
  and also the requirements.

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Things you should know before trademarking a logo

• Chiefly, you have designed a logo to represent
  your business. Before sending that logo out into
  the market world, you should consider how to
  protect the design, and the business behind it,
  through correct use of trademark law. The
  changeover from concept to operation, from design
  to brand, is very crucial one.
• A trademark is the one protects a word, slogan,
  image, logo or some combination that connects
  products with the maker of those products from
  being used by someone else. A trademark takes
  different shapes, as long as the mark you want to
  protect is distinctive.
• The public must recognize the trademark as an
  identifier for the products source. The perfect
  example of a trademark is the Nike swoosh symbol.
  When you see that mark on a pair of sneakers you
  immediately recognize those shoes as a Nike
  product.

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Things that protects the trademarks

• The main purpose of a trademark is to protect
  your brand identity in the marketplace and also
  build trust among the customers. To use another
  shoe company as an example, the Adidas trademark
  of three white stripes lets people know that the
  shoes theyre about to buy were designed and made
  by the Adidas Company. If a company actively
  selling shoes or things with two white stripes,
  people could easily think those shoes are Adidas
  shoes.
• Consequently, not only does Adidas shoes lose
  money from the lost sale, but they also loss
  consumer confidence, if the similar looking shoes
  are lower in quality. The Trademark law states
  that your trademark is infringed by another
  companys brand elements in order to confuse
  consumers. The companies that are infringing must
  stop using the similar trademark.

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Who owns the logo trademark?    

• Actually, Trademark ownership comes from those
  using the trademark for products in commerce. The
  logo designer will not be the trademark owner.
  The business owner who uses the trademark
  properly owns the trademark.
• Your logo becomes a trademark when it appears on
  labels, packaging or the product itself and the
  public recognizes the company behind that
  particular combination of colours and shapes.
  Imagine you see a sign with golden arches you
  probably are picturing a Happy Meal (also
  trademarked) or similar fast food item at a
  McDonalds restaurant.

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Things that you gain by registering your logo as
a trademark

• In United States, trademark rights begin to come
  into existence when the trademark is put into
  commercial use. This means that, as soon as you
  start to advertise your product with your logo,
  your logo is technically trademarked in the eyes
  of the law. But these trademark rights are
  geographically limited and difficult to enforce.
  So even though, you dont have to go to the worry
  of officially registering your trademark with
  the U.S. Patent and other Trademark Office, you
  might want to only registered trademarks

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• Are protected under the federal Anti-cyber-squatti
  ng Consumer Protection Act. This allows trademark
  owners to charge domain name registrants using
  identical or puzzling similar trademarks, things
  like Microsoft versus MikeRoweSoft.com
• Can ask the U.S. Customs and Border Protection to
  automatically confiscate counterfeit and
  infringing imported goods.
• Will make you to get trademark protection in
  other countries.
• Permit you to bring an infringement and also to
  claim in federal instead of state court.
• Award trademark owners presumptive ownership on a
  national level. Thats a fancy way of saying you
  are recognized as the owner of that trademark in
  the entire United States.

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THINGS THAT QUALIFY YOUR LOGO FOR REGISTRATION

• Though the Patent Office approves hundreds of
  thousands of things trademark applications
  annually, not all trademarks are eligible for
  registration. Trademarks cannot be an offensive
  or misleading one. For example, the Applications
  for trademarks that are made similar to existing
  ones will be denied unless the products are
  completely unrelated, as in the case of things
  like Apple Computers and Apple Corps, the highest
  company owned by the Beatles. Trademarks that
  sound alike, mean the same or are visually
  similar to each other are likely to cause
  confusion among consumers and it cannot be
  registered.
• You can start the process of trademarking a logo
  as soon as possible, by submitting an
  intent-to-use application before you start your
  business or product launches. The trademark
  cannot be officially be registered until the
  Patent Office completes its review and approval
  of an application.

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THE STRONGEST TRADEMARKS THINGS

• The point of a trademark is to distinguish your
  product from the other competitors in the market.
  Therefore the trademark must be unique and
  distinctive. Trademarks are distinguished from
  weak to strong, with the strongest being the most
  easily protected by law because they are distinct
  in the minds of the public and are readily
  distinguishable in the market.
• The strongest things tend to be spectacular or
  arbitrary.  Generic words or logos cant be
  trademarked. For example, if you open a pizza
  restaurant and name it The Pizza Place, youll
  probably have a harder time trademarking your
  name than if you name it Tricycle Pizza.

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Why you cannot register your logo as a trademark?

• There are many reasons why you might choose not
  to pursue trademark registration, depending on
  your current and anticipated circumstances
• You are not sure how long your business will
  last. Applying for trademark registration is time
  intensive process, the average time taken will be
  10 months to complete the process. The
  application is expensive, too, with a minimum
  filing fee of 325 if you prepare and submit the
  most basic application without legal counsel.
• Your logo must change in a couple of years. Only
  the exact version that is registered is legally
  protected, and you could actually weaken the
  registered trademarks rights by using
  variations. Also, logo that are registered as
  trademarks must continue to be used in order to
  retain their rights. If you dont use your logo
  then there might not be a reason to register.
• Your logo cannot be registered if it is similar
  to another already in existence somewhere else in
  the country.

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Who can apply for Trademark?

• Any individual can apply for trademark
  registration to the Trademark Registry under the
  jurisdiction   of the business place of the
  applicant in India falls. In case of a company
  about that are be formed, anyone can apply in
  his/her name for succeeding assignment of the
  registration in the companys favour

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Requirements for filing Trademark application

• Name of the activity or Firm name, Company name.
• Name of the proprietor or the name of the
  partners
• Address of the Business Place
• 20 Labels of trade mark logo in visiting card
  size or lettering style or device
• Description of goods to which the mark is
  applicable
• Date of the first use of trade mark, if the mark
  is already in use.  The application must be filed
  as proposed to be used
• Through this you can  also verify from your first
  invoice
• If the product is for medicinal preparation, then
  you should verify from the Drug Endorsement made
  for the particular product in your drug license.
• Authorization Form on Form TM-48 in stamp paper
  and s to be signed by the authorized signatory in
  case if the applicant wants to engage the
  services of a Trademark Attorney.
• If it is a Private Ltd Company or a Public
  Limited Company, things like furnish the
  Memorandum and Articles of Association.

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Stages involved in trademark registration

• 1. Allotment of application number
• Upon receipt of an application for registration,
  a serial number is allotted to the same, which is
  used as a reference number for application. Same
  number is used as Trademark Registration Number
  if the mark is registered.
• 2. Preliminary Examination Report
• The Registry examines the application and sends a
  Preliminary Examination Report (PER) together
  with Formalities Check Report (FCR) to the
  applicant wherein the Registrar would call upon
  the applicant to remedy the deficiencies and
  departmental objections. The applicant has to
  reply to the PER and FCR within a period of one
  month.

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• 3. HEARING
• If the Registrar is not satisfied with the
  application and reply to PER, he may call the
  applicant for the hearing if the applicant in his
  reply requested for the same. If the Registrar is
  satisfied in the hearing he would order
  advertisement.
• 4. ADVERTISEMENT IN TRADEMARK JOURNAL
• Upon acceptance of the application the Registrar
  should cause the application with the conditions
  and limitations, if any, to be advertised in
  the trademark journal as accepted.

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• 5. OBJECTIONS, HEARING AND REGISTRATION
• Any person within 3 months from the date of
  advertisement or re-advertisement may in
  prescribed manner (Form TM 5) oppose the
  registration by paying prescribed fees
  i.e.,2,500/-. The applicant shall file things
  like counter statement in prescribed manner (Form
  TM 6) by paying prescribed fees i.e.,1,000/-.
  Any party desirous of hearing must file
  application in prescribed manner (Form TM 7) by
  filing prescribed fees i.e.,500/-.
• The Registrar after considering the written
  averments and after hearing, if any, decides as
  to the claims of the applicant and the opponent
  and thereafter if decision is in favour of the
  applicant, registers the trademark. Upon
  registration of the trademark, the Registrar
  shall issue registration certificate in
  prescribed form. Registration of the trademark
  shall be effective from the date of the
  application and shall be in force for the period
  of ten years from such date. In case any party to
  the opposition proceedings is aggrieved by the
  order of the Registrar, it may file an appeal
  against the same with the Tribunal.

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• Grounds of refusal
• Section 9 provides the absolute grounds for
  refusal of registration of any mark and section
  11 provides for the relative grounds for refusal
  of registration. The rejection order is generally
  for the reason of attracting provisions of either
  section 9 or section 11.
• DURATION OF A TRADEMARK
• The term of a trademark registration is for a
  period of 10 years. The renewal is possible only
  at a period of 10 years each. Unlike patents,
  copyrights or industrial design, trademark rights
  can last forever, if the owner continues to use
  the Trademark.

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REMEDIES FOR INFRINGEMENT AND PASSING-OFF

• Two types of remedies are available to the owner
  of a trademark for unauthorized use of his/her
  mark or its imitation by a third party. These
  remedies are One is action for infringement in
  case of a registered trademark and another one is
  an action for passing off in the case of an
  unregistered trademark.
•  The basic difference between these things are an
  action for infringement and an action for passing
  off is that the former is a legal remedy and the
  latter is a common law remedy. In order to
  establish infringement regarding to a registered
  trademark, it is necessary only to establish that
  the infringing mark is identical or similar to
  the registered mark and further no proof is
  required. In the case of a passing off action,
  proving that the marks are identical or similar
  alone is not sufficient. The use of the trademark
  likely to deceive or cause confusion.

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International Trademark Protection

• There is no system wherein a single trademark appl
  ication is sufficient to protect the trademark
  right internationally.
• Moreover, it is possible to apply for
  multinational filing systems in certain regions
  in order to obtain trademark protection. For
  example, major countries like Belgium,
  Netherlands and Luxembourg have a single
  trademark registry, commonly referred as the
  Benelux Trademark Register.