Table of Contents
Write a comment
unfortunately the system of trademark registration is national law and there are autonomous trademark offices in more than 190 countries as a general rule you cannot enforce a trademark registration from one country to prevent somebody using your brand in a different country having a registered trademark can help in some cases particularly those of bad faith which means that somebody in another country who knows about your brand wants to prevent you from using it by quickly registering it in another jurisdiction before you can all trademark offices are autonomous in their jurisdictions most of them require that an applicant located in a different country be represented by an attorney this means protecting your mark in many different jurisdictions can be quite expensive and cumbersome now the Madrid Protocol system provides for the International registration of trademarks by way of one application that can cover more than one country more than 90 jurisdictions are currently members of the Madrid Protocol and have ratified it members include the USA and most European former Soviet Union and even Asian countries notable emissions from the protocol or Canada and most Africans in South American countries the Madrid Protocol requires the applicant to first file of basic application in one country and subsequently file an international registration with typo the World Intellectual Property Organization located in Geneva which administers the Madrid Protocol the WIPO filing is called an international registration which is actually pretty confusing as international registration is not actually a trademark registration it's merely a conduit or a middleman through which the information of the first application gets passed through to all designated jurisdictions now each autonomous trademark office then examines the application and reports their decision whether to grant the protection or not or any further questions back to WIPO which in turn reports the information back to the applicant either in written form or through their online database called the Madrid Monitor one of the big cost advantages of using the Madrid Protocol is that you do not have to hire an attorney in each designated country which usually makes the process a lot cheaper unlike the Madrid process national trademark offices also require the applicant to comply with the specific formalities of each jurisdiction such as providing proof of authorization to file an application or documenting the priority claim this is usually costly and time-consuming especially when the local trademark office requires a notarized and oftentimes legalized power of attorney to point the local representative within the country these formal requirements may still need to be satisfied if an objection is raised on your international registration application and the local representative will need to be hired in order to respond the biggest disadvantage is that the entire international registration process is that it is dependent on the good standing of the mark or application it is based upon in during the first five years the basic trademark application does not register or gets cancelled for any reason every single subsequent designation despite whether the local office has granted the protection already will be cancelled now in comparison if an applicant filed individual national applications then whether the initial application is successful or not does not matter for subsequent applications in other countries there are also requirements for the basic application applicants can only use the Madrid roof if their basic application was made in the country of their nationality or where they have a permanent business establishment trademark professionals that frequently file under the Madrid Protocol are often aware of what we call the Rebecca stand track when you fill in the application form for the International registration some countries assess an additional individual fee in addition to the WIPO fee for designating the country the purpose of this is to make sure that filing trademark through WIPO ends up getting the trademark office in each country the same filing fee that they would have received if the filing had been done directly at the local trademark office whose Becca stands however is an exception it charges an individual fee of 1542 Swiss francs equivalent to almost 1,600 US dollars despite the official filing fee in this Becca stand trademark office being approximately 500 US dollars now by comparison designating Russia for example just adds an individual fee of approximately 100 US dollars please feel free to watch more of our videos to give valuable insights about the mechanics of applying for trademark registrations defending your marks opposing other conflicting marks dealing with office actions and many other intellectual property issues my name is Jonathan Morton and I'm a licensed US attorney and a member of the trade markers Network don't forget to subscribe you
Thanks for your comment Kendall Mutschler, have a nice day.
- Emmitt Bercier, Staff Member
what rights do owners of unregistered trademarks have as with copyrights trademarks do not necessarily have to be registered owners of unregistered trademarks have the exclusive right to use the mark in the geographic area where the mark is used unregistered trademark holders also have the right to bring civil action against infringers and are protected against false advertising unregistered trademarks are usually identified by the TM symbol what are the benefits of registering a trademark additional benefits received by trademarks formerly registered with the USPTO include a legal presumption of ownership of the mark an exclusive right to use the mark nationwide on or in connection with the goods and services listed in the registration public notice of claim of ownership of the mark the ability to bring an action concerning the mark in federal court the use of the u.s. registration as a basis to obtain registration in foreign countries the ability to record the US registration with the US Customs and Border Protection Service to prevent importation of infringing foreign goods the right to use the federal registration symbol listing in a united states patent and trademark offices online databases because registration cost money many small businesses choose to rely upon the common law protections afforded to trademarks Google for example used an unregistered trademark for its first six years in operation the company formally applied for a registered trademark for Google in 2006 which was granted in 2012 but trademark protection can be vital to a small business as one recent case demonstrates in 2007 pium taboo bein first registered the 1950s style red white and yellow logo for his startup the Z burger chain a few months before he opened his first restaurant as the New York Times reported his first restaurant was an immediate hit attracting students from nearby American University the place later drew public praise when it gave free food of federal workers who were furloughed from their jobs during government budget cutbacks but Mr to Vivian eventually fell out with his partners who then tried to stop him from continuing to use his Z burger bran with his expanding chain of restaurants they also demanded he'd transferred the trademarks to them but because mr. Toby bian had taken the time to properly register his trademarks a federal judge ruled in August of 2015 that he was the legitimate owner of the trademarks and could continue to use them how do you register a trademark in order for your trademark to be eligible for registration with the USPTO you must actually use it in conjunction with commercial activity or be about to use it within six months when applying for trademark registration the applicant must file an affidavit attesting to the date the mark was first used in commerce as well as a specimen showing how the mark was first used whether in advertising or on the product in a store setting it is imperative that the applicant identify the earliest provable date of first use in commerce to lessen the likelihood that another party can claim prior use of that mark and invalidate the trademark the USPTO also offers an intent to use application which allows an entity to apply for a trademark that is not yet used in commerce if you have not yet used the mark but plan to do so in the future you may file based on a good faith or bona fide intent to use the mark in commerce a bona fide intent to use the mark is more than an idea but less than market-ready for example having a business plan creating sample products or performing other initial business activities may reflect a bona fide intent to use the mark the mark must be put into use within six months of receiving a notice of allowance from the USPTO or the applicant risks having to pay extension fees or losing the mark entirely if the trademark is still in commercial use five years after registration the owner is eligible to receive an additional protection known as incontestability protecting it from challenges to validity ownership registration and descriptiveness how else can trademark value be derived a trademark can be assigned to others in the event of purchase or acquisition by another entity there are other reasons why an owner might assign trademarks to another party including a business name change a security agreement a license a lien as collateral for a loan or because as a result of a bankruptcy procedure Ford Motor Company for example used its trademarks as collateral for a twenty three point five billion dollar loan Ford was still able to use its trademarks but if the company had defaulted on the loan the trademarks would have been assigned to the lender trademarks can also be licensed to others in 2012 licensed trademarks generated five point four five billion dollars for North American owners reported the licensing industry merchandisers Association that same year the top 150 global brand licensers earned 230 billion dollars in sales of trademarked products abandonment of a mark results in loss of ownership and The Associated rights of the mark for remark to be considered abandoned it must be discontinued from active use in commerce with no intent to resume the commercial use of the mark evidence of non use for three consecutive years is usually considered to be sufficient proof of abandonment upon abandonment the trademark owner loses the right to prevent others from infringing the mark you
Thanks Scotty your participation is very much appreciated
- Emmitt Bercier
About the author
I've studied social psychology at Westminster College, Pennsylvania in New Wilmington and I am an expert in molecular pathology. I usually feel sleepy. My previous job was casino surveillance officer I held this position for 20 years, I love talking about sports science and birdwatching. Huge fan of Blackpink I practice fencing and collect coins.
Try Not to laugh !
Joke resides here...