Trademarks are essential assets in the protection of brand identity, as well as a brand's reputation in the market, but applying for trademark protection can be a tumultuous task

Trademarks are essential assets in the protection of brand identity, as well as a brand's reputation in the market, but applying for trademark protection can be a tumultuous task. Among the multitude of considerations applicants face, various jurisdictions allow for the filing of trademark applications even before the mark in question has been used.

Those filing before the United States Patent and Trademark Office (USPTO), for example, are afforded the opportunity to file an intent-to-use trademark application if they so wish, but what sets it apart from a use-based application?

Intent-to-use Trademark Applications

An intent-to-use (ITU) trademark application before the USPTO can be a viable and useful filing option for applicants who have not yet utilized their mark in commerce, but have a good faith intention to do so in the future. The applicant must provide evidence of said intention to the USPTO, typically in the form of a declaration or statement of use.

Whilst a mark filed for via an ITU application will not be registered until the trademark has been demonstrated to have been used in commerce, such applications can be a great option for those who wish to secure the earliest possible application filing date, even before they have used the mark. In turn, this provides priority of the mark over potential competitor's later marks, comprising one advantageous element of ITU filings. This can be particularly useful for companies that are still in the developmental stages of business and have not yet begun to sell or advertise their goods or services, but intend to in the foreseeable future.

It is important for applicants to note that an ITU application does not provide immediate protection for a trademark, and that it is required for the mark to be used in commerce within a certain time frame depending on the circumstances surrounding the application.

Use in commerce as per the USPTO can constitute use of the mark with respect to goods and/or services, and can occur on an interstate, territorial, or foreign commerce basis. The demonstration of use can comprise the trademark being placed on the packaging of the good, for example, and requires the good to be sold or transported in commerce. In relation to services, use can comprise the sale or advertising of the same, and proof that the service is being rendered in commerce.

There are three periods during which an ITU trademark applicant can claim the mark to have been used in commerce, the first being any time between the filing date of the ITU and the date of approval by the examiner of the mark for publication. The second option is for the applicant to confirm the mark's use in commerce within the first six months following the date of issuance of the Notice of Allowance from the USPTO.

If neither of the first two options are viable, applicants may also file up to five requests for an extension of time to file a Statement of Use, constituting a maximum extension period of 3 years, alongside payment of the corresponding fee. If confirmation of use of the trademark is not provided within these time constraints, the ITU application may be abandoned, rendering the trademark vulnerable for use by others.

Use-Based Trademark Applications

A use-based trademark application, on the other hand, can be filed only once a trademark which is the subject of the application has been effectively used in commerce.

In order to be eligible for filing a use-based application, the trademark must have been used in connection with the sale or advertising of goods or services in commerce, as with the eventual registration of ITU applications. Evidence of said use is required to be provided to the USPTO, typically in the form of a specimen or sample of the goods or services with the trademark.

Once the application is approved, the trademark is registered with the USPTO, and the company has exclusive rights to use the mark in connection with the goods or services listed in the registration.

One advantage of filing for a use-based application is that it provides for a more expedited route of protection of the trademark in contrast with an ITU application.

Other jurisdictions operate different but similar systems to the US in relation to such applications, with neighboring Canada allowing for the filing of a trademark application on a "propose to use" basis, which potentially constitutes a less stringent requirement to meet than intent-to-use for applicants.

It's important to note that trademark laws and regulations vary by country and can be complex. If you are interested in filing a trademark application or learning more about intent-to-use applications, please contact us here at IP-Coster.

Madrid Protocol vs Madrid Agreement

When it comes to protecting one's intellectual property, there are several international agreements which assist in the facilitation of IP protection across the globe. The obtainment of trademark protection in multiple jurisdictions, in particular, is greatly assisted by the Madrid Agreement Concerning the International Registration of Marks of 1891, as well as the Protocol Relating to the same Agreement of 1989.

Combined, they create what is known as the Madrid System for the International Registration of Marks, allowing for an often more efficient route of obtaining trademark protection in multiple jurisdictions simultaneously. As such, an "international" application can be filed designating any/all Madrid member states, and the subsequent registrations will be effective individually in each designated state as if it had been filed through the national route.

Any Member States of the Paris Convention for the Protection of Industrial Property may accede to and join the Madrid Agreement and/or Protocol, with states being able to adhere to either just one, or both, of the treaties.

Whilst both the Agreement and the Protocol are complementary of one another and are parallel in nature, they operate as separate, independent treaties and as such, possess several inherent differences. Applications can therefore differ in requirements, expected time limits, and fees, for example, depending on whether an application was filed under the Madrid Agreement, or the Madrid Protocol.

The Agreement itself, for instance, preceded the Protocol by over a hundred years, intending to set the foundations for a more efficient and simpler route of obtaining international trademark protection than having to file in multiple jurisdictions separately.

The Protocol, on the other hand, was created aiming to add a higher level of flexibility to the Madrid System, with the adjustments allowing for the System to be compatible with the national legislation of more countries and intergovernmental organizations who were previously unable to accede to the Agreement based on their domestic laws. Moreover, the Agreement only allowed for the accession of individual states, whilst the Protocol opened up the opportunity for accession in relation to intergovernmental organizations in addition to independent countries.

The two treaties also present multiple differences when it comes to the filing and maintenance of trademark rights. The Agreement, for example, required an international application to be filed based upon a home country registration. The Protocol, however, introduced the possibility for an international registration to be based on either a national, or "basic", trademark application, or upon a basic trademark registration with the trademark office of a Contracting Party to the Protocol.

The Agreement further required an international application to be filed in an office of origin in a country in which the applicant has “a real and effective industrial or commercial establishment.”, with applicants only able to file in their country of domicile if they had no such commercial establishment. Once introduced, however, the Protocol allowed for applicants to choose an office of origin based on either commercial establishment or domicile.

At the time of introduction, the Madrid Agreement obligated applications to solely be filed in the French language, however once the Protocol was introduced, applicants were also permitted to file applications in the English language under the Madrid System. In 2004, Spanish was introduced as an additional language to the System, thus meaning applicants may file international applications in any of the three operational languages of the Madrid System regardless of whether an application is filed under the Agreement or Protocol. Individual offices of origin, however, may enforce restrictions as to which of the three languages are permitted for use.

The procedure for the payment of fees also differs between the two treaties. The Agreement, for example, obliged applicants to pay a fixed fee for each designated Contracting Party, whilst the introduction of the Protocol meant that applicants could either pay via fixed fee, or Madrid Contracting States could opt for an individual fee system in which the state may charge the same fees for international applications as they would had the application been national in nature.

Concerning trademark refusal periods, the Agreement allows for a total of 12 months for such a period, whilst the later introduced Protocol brought in a period of 18 months for refusal which also has the possibility of being extended. However, if the country of origin and designated country are both parties to the Madrid Agreement and Protocol, according to article 9sexies of the Protocol, a 12 month period for the issuance of provisional refusal is applicable.

Finally, the trademark validity period under the Agreement comprised a total of 20 years, whereas the Protocol introduced a new period of 10 years. Despite the considerable shortening of the time period, this provided the opportunity for the elimination of unused or unmaintained trademarks from the International Register.

Despite varying in a multitude of ways, both the Madrid Agreement and the Madrid Protocol have proved to be an asset to the obtainment of trademark rights internationally. Covering 130 countries with 114 members, the Madrid Union encompasses just how useful global cooperation and centralized IP systems can be.

What’s priority right?

What’s priority right?

Priority right, which is activated by the first filing, shows that you’ve been the first to apply for an invention, industrial design or trademark. To make use of it, you need to claim your priority right when filing abroad.

What’s the time limit for claiming priority?

Applicants have “twelve months for patents and utility models, and six months for industrial designs and trademarks” (Paris Convention, Art.4) from the filing date of the initial application to take further actions.

Why shall I claim priority?

The Patent Office will decide on the novelty of your invention (check out our post on novelty) based on the priority date. If you filed without priority, all the information that became known in the world (including your first application, if published) would be a part of the state of the art, and your invention would no longer be considered new or novel.

All in all, priority claim preserves the rights of the applicants who want to obtain protection for their intellectual property in more than one country.

Patent and Trademark search

When searching for information about IPR protection, you may come across terms such as patent and trademark search, but how does one know if it is obligatory or needed, and who conducts these searches?

A patentability search is also known as a prior art, patent or novelty search. It is conducted to find out if the same invention has already been disclosed by someone else, or if a similar invention exists. A patentability search is not obligatory and is conducted when drafting your patent application. Additionally, this type of search can be performed by the patent office upon examination of your application.

A trademark search helps to determine whether the same trademark has already been registered. In most countries, you are not obliged to conduct a trademark search prior to filing; but it should be noted that it is a part of the examination process in many countries.

But how do you know if you should conduct a search? The results of a patent search can help you to decide whether your invention is worth patenting, evaluate your chances of obtaining a patent, and prepare responses to possible Office Actions.

With trademarks the benefits are also considerable: you can avoid accidental infringements, consider your future actions before filing an application, and discover potential competitors who can file oppositions.

For conducting a search, it is recommended that you approach a professional trademark or patent attorney.

Understanding trademarks

Trademarks are at the epicentre of both intellectual property and our daily lives, with brand names emblazoned into every moment of our day-to-day activities. From our morning cereal to TV adverts, right down to the toothpaste we use and the bottled water we drink, trademarks are everywhere, so let’s take a look at the particulars of this type of IP, and provide an overview of what can and cannot be registered.

Trademarks are used to identify and distinguish a company's products and/or services from those of its competitors. The most common types of trademarks are word, figurative, and combination marks, but may also comprise sounds, smells, 3D models, colours, or logos, depending on the allowances of the jurisdiction.

Trademarks themselves are registered for specific goods and/or services which, for many countries, are classified in the Nice Classification of Goods and Services. This is an international classification established by the Nice Agreement of 1957 and revised each year, presently utilized by approximately 150 IP offices including the regional offices of EUIPO, OAPI, ARIPO, and BOIP. At present, there are 34 possible classes of goods, and 11 classes of services for which a trademark can be registered.

In general, trademarks must be distinctive in order to be registered. In some countries such as the UK, however, it may be possible to register a non-distinct mark, provided that prior to the date of registration, it acquired a distinctive character as a result of its use. Distinctiveness in the US has experienced some overhaul when it comes to non traditional trademarks, whereby court rulings have found that marks in relation to sound and product packaging are capable of being inherently distinctive, whilst product design, scent, colour and taste are not. Those not inherently distinctive must therefore provide evidence of a secondary meaning, or acquired distinctiveness, in order to be registrable and protected under US courts.

Trademarks that cannot be registered usually include those which are misleading (if it uses the word 'organic' for a product that is not) or descriptive if a mark describes the goods or services to which it will relate. Furthermore, marks that contain internet domain names, aspects that are deemed offensive such as swear words or inappropriate images, as well as those similar to state symbols and other official signs, emblems subject to protection under an international agreement, abbreviations and names of international intergovernmental organizations, are not registrable in most jurisdictions.

Trademarks can vary in terms of their strength of protection, for example, a strong mark in accordance with US trademark law would be a 'fanciful or coined' mark. These marks are inherently distinctive as they constitute invented or sometimes archaic words that bear little, or no, resemblance to the goods or services provided, such as 'Pepsi'. Another type of strong trademark is the arbitrary mark, consisting of words or symbols that have common meaning in the jurisdiction of registration, but are unrelated to the good or service, such as ‘Apple’ for computers. Weaker marks include suggestive marks such as 'Netflix', which make some reference to the subject matter of the mark.

Please note that the aforementioned examples of trademark requirements and strength of protection are largely based on UK and US law, and will differ in each jurisdiction. For more information on trademark registration, please contact us.

Trademark opposition

One of the key parts of the procedure for the registration of a trademark is the possibility of oppositions to an application.

A trademark opposition is a formal objection, filed by a third party, against the registration of a mark. National and regional trademark laws outline the procedures for the opposition process in each jurisdiction, including the particulars such as opposition terms, documents etc. In many jurisdictions, a trademark application is published once it has been accepted and deemed as registrable by the trademark office. Thereafter, third parties may object to the registration of the mark during a defined period of time on the basis of grounds set forth by the relevant trademark law. This period is otherwise known as the Opposition Period.

There are 2 types of opposition grounds - absolute and relative. Absolute grounds encompass issues with the trademark itself, such as if the mark is not distinctive, is descriptive of the goods/services covered by the mark, or is generic in nature in relation to the goods or services.

Relative grounds rely on the basis that an earlier trademark right exists, and the applied-for trademark conflicts with said earlier right, for example, if it is confusingly similar, or takes advantage of a previous mark’s reputation.

Should an opposition be filed against the registration of a mark, the relevant IPO will typically make an applicant aware of the opposition, and will set a deadline for which a response may be filed. This response will usually comprise either a Notice of Defence and a counterstatement with arguments to defend the application in full, withdrawal of the application, or limiting of the goods or services. This stage may continue to both parties filing further submissions in support of their side, and the IPO will form a decision based upon said submissions. In some jurisdictions, the parties may elect to have the matter heard at a hearing.

One possible outcome is that the opposition is rejected by the IPO. In this instance, the trademark application may then proceed to be registered without issue.

Should an opposition be accepted fully, the trademark application shall be considered withdrawn, and thus will not be registered.

If, on the other hand, the opposition is accepted partially, the trademark applicant may be obliged to amend their mark in accordance with the decision, for example, reducing the list of goods and/or services in the application which were subject to the opposition.

Alternatively, it may be possible to negotiate an amicable solution with the opposing party in order for the application to continue to registration without the need for the matter to be decided by the IPO.

Considering the complex nature of trademark oppositions, it is important for both applicants and potential opposing parties to be aware of all particulars of the trademark opposition procedure. If you have any questions regarding the trademark opposition process, or require the assistance of a trademark attorney, feel free to contact us.