03-Jan-2022
written by: Nasser Messaike
What is a trademark and what should you consider while registering a trademark?
A trademark is any name, symbol, figure, letter, word, or mark adopted and used by a manufacturer or merchant in order to designate specific goods or services and to distinguish them from those manufactured or sold by others. A trademark is proprietary and is usually registered with the Patent and Trademark Office at a national, regional and/or international level in order to assure the exclusive rights of use by its owner.
What can be registered as a trademark has significantly evolved over the years and a wide range of signs and words can be registered as a trademark from sounds to smells to colors to holograms as long as they can serve the purpose of brand identifier. In essence, your trademark is just another way of referring to your brand. Once you have defined your project and you are ready to get your trademark registered follow these trademark registration guidelines:
1. Make sure that your trademark is distinctive.
Generic or non-distinctive terms must be avoided as the distinctive character of a trademark give its strength.
Non-distinctive or generic terms are the terms which are necessarily used to refer to the products and services you want to identify under the trademark. These terms will not be a strong identifier and it will be difficult, if not impossible, to prevent competitors to use same terms in order to refer or promote same products or services. Simple example is the term « Apple », non-distinctive in relation to the fruit apple but highly distinctive for computer and mobile products. It is a term of a successful (and usually the first) product, used commonly by people to name an entire category or class of products.
The exclusive rights to a brand name, gained through its registration as a trademark, can be lost through careless and improper use. This can happen if the public treat or come to regard the brand name as the common name for a particular type of product or service. If your trademark becomes generic it can be used by anyone. Some former brand names which are now generic, or common product names include ASPRIN, NYLON and ESCALATOR.
2. Choose your list of goods and services wisely.
You might have already a clear idea of what are the products and services for which your trademark would be used. If so, it is highly recommended to clearly identify them all at the time of application of the trademarks by choosing the appropriate classes of products and services (Nice Classification).
In general, trademark ownership for one class will not allow you to enforce your brand against a different class of goods or services using the same trademark name. Never say your trademark will cover all goods and services of a class and neglect the fact that others may have them.
You can enforce your trademark only if their services and products are related to yours in such a manner as to create confusion in the public mind. Dove Soap and Dove Chocolates are good examples of this.
3. Define trademark ownership
The owner of a trademark is basically the individual or company under which name the trademark is registered. It is therefore essential to define clearly who will be the owner and applicant of the trademark in order to avoid any potential disputes and costs over the trademark ownership especially should you consider selling the trademark or the brand in the future.
Try to keep it simple and use a legal services company to help you register your trademark and explains for you your rights and give you suggestions.
4. Keep track of your registration process
In most jurisdiction the filing of a trademark application with the Trademark Office will open a several months’ observation period in order to verify that the trademark is registrable and does not contravene to any prior rights of other trademark owners. If there is any ground for rejection or any third-party opposition to the trademark registration, the Trademark Office will notify you and will instruct you to reply within defined timeframes. The tip here is clearly to treat them seriously and in a timely manner, with the help of legal advisers if needed, to keep your rights secured. In fact, failing to respond to these grounds, your trademark application might be rejected.
5. Don’t take protection for granted.
Don’t think that if your trademark is registered and in use that your trademark rights are secured. While it’s true that once your trademark is registered properly and renewed you have all rights in your hands, your trademark is still vulnerable. You can still lose your trademark’s power in a number of ways, such as improper use by employees or third parties, or, most importantly, by knock-offs.
In addition to improper use, in some countries the non-use of trademark for a specified period of time may lead to the cancellation of the registration, for example, the non-use of a trademark for five (5) consecutive years in Morocco gives the right to any interested person to claim the withdrawal of your trademark registration.
6. Protect your slogan
Never underestimate the value of your slogan. If you’ve got a great slogan, tagline, catchphrase or company motto don’t you want to protect it? Slogans are the lifeblood of many products and services, becoming almost iconic. Good examples for a great slogan are McDonalds (I’m lovin’ it) and Nike (just do it).
As these companies show, the best slogans become synonymous with the brand as a whole, reflecting the company’s products and values in one short or simple statement. Effective taglines or slogans such as these are not easy to create, so when you do it’s important to protect them and enforce them against would-be copiers.
7. Use Symbols
Many people while registering a trademark, neglect the fact of using symbols. These are the symbols you should use next to your trademark:
▪TM: The TM sign shows the brand name for an unregistered trademark classified as a product (classes 1 to 34).
▪SM: The SM sign is identical to the TM sign except it designates a service mark (classes 35 to 45).
▪®: Use the ® symbol once you register a trademark or service mark. It shows that the country authority has approved the registration.
Although outside USA and in many jurisdictions the use of symbols does not have a legal impact, it is advisable, where possible, to indicate your trademark rights at least once in the text by placing the appropriate symbol or legend beside the trademark. The appropriate symbol is ™ where the trademark is not registered and ® where registration has been obtained (some companies choose to just put ™ on all brands to avoid confusion). It could be served to show the appropriate use of your trademark and your intent to protect your rights while indicating to third parties your ownership on it.
Act wisely while registering your trademark, and if you want to avoid office actions, oppositions, rejection of registration or cancellation of your trademark registration, you should follow these 7 tips for trademark registration.