Trademark is an identity of your business. And trademark registration is part of reputation and protection of any business. It’s your intellectual property. Many believe that getting a trademark is an easy job. To an extent it’s true, but getting an appropriate name which perfectly carries on your business identity is important. For start-up projects much thought has to be given for an apt name. It should carry the right impression to your potential clients and market. We should think not only in terms of the present state of our business, but in terms of how do you see your business shaping up ten years down the lane. Thus one should be a visionary while thinking about trademarking your business. After some time, the same trademark would be economically much valued than your entire stock and would hold your reputation and goodwill in business.
Contrary to popular belief, trademark registration should not be taken lightly. A trademark represents your business, your sweat and blood, your baby. It’s an Intellectual Property of yours. A name or a mark for your particular brand or for your whole business or for a line of production in your business should be taken after serious inquiry and forethought. Much planning should be given before taking the step because for all the coming years your business would be represented by that name. You should not suffer nor your businesses for a careless step you have taken or your trademark registration providers have taken while registering the mark/name.
Trademark Registration Kerala by Biz and Legis
We are a leading law firm in Kerala with a trademark wing and intellectual property attorneys. We can be trusted with your hard earned business. We will provide you the services like Trademark registration in Kerala, Trademark filing, trademark search – for checking any others have similar names or if you are an already established name, if any have violated your rights or making untoward profits with your name, trademark application and document preparation, and any other legal services like trademark prosecution, trademark infringement etc. We respect your business and more importantly we respect your hard earned name behind that business. Just contact us for Trademark Registration Kerala. Just call us on 9847182002.
How long does trademark registration will last
A trademark registration can last for an unlimited term if the owner continues to use the mark to identify the goods or services.
The usual term of a federal trademark registration is ten years. However, the registration can be kept alive by following certain terms of renewal. Between the fifth and sixth year after the date of the first trademark registration, the owner must file an affidavit and by paying an added fee to keep the registration alive. The registration gets cancelled if the owner misses to file an affidavit. However, the owner gets a grace period of six months to file an affidavit after the completion of sixth or tenth year, by paying an extra fee. You can read more on how long does trademark registration last or you can know more from from WIPO.
Protect the distinctive sign representing your business because it’s legal protection and ownership is very important for your business and trade. Your sign functions as indicating factor for your goods and services. Use proudly your trademark with your goods and services after registering it. Because your trademark is your identity and it differentiate your good from other providers and competitors.
It is mandatory for a company/business to register itself with a distinct trademark. It is illegal to use a trademark that is similar to another business/company.
Federal and state trademark databases enough to uncover a possible conflict ?
Federal and state trademark databases help in making a wide search for similar trademarks in a country. Thus, a business before it’s trademark registration can make a search in its state trademark database and check for similar names. This can help in making a wide selection of a trademark name.
Thus, databases are enough to uncover a possible conflict.
As trademark search is an imprecise science, this is not ideal but sufficient. Since trademark rights are granted on a ”first come” basis, it’s important to determine if anyone is using your title in a trademark sense.
This is accomplished by doing a screening search. Many valid trademarks exist at common law without ever appearing on the federal trademark register.
Federal Trademark Database Search
Some appear in state trademark registrations others are not registered at all. Thus, the search must encompass marks beyond those shown in federal applications and registrations. Do you wish to know more about federal trademark database search ? Just visit USPTO website.
Wish to know what is Trademark Conflict ?
Trademark conflict means conflict between two companies or business over similar trademark. A trademark distinguishes a business, company, product or service from those of its competitors. Similar trademarks or designs often mislead consumers worldwide.
When a third-party is found to be using a trademark similar to yours, there are chances of the business owner getting involved in a trademark conflict. Thus, it is a conflict between two companies or business over similar trademarks. A proprietor who has legally registered trademark achieves exclusive rights to use the trademark. He can use the registered trademark sign with his goods or services. If a third party uses an identical trademark on same or similar goods, the registered proprietor may sue the third party for trademark infringement. which means a third party cannot use a similar trademark on same or similar products covered under registered mark, with out any prior consent from the registered proprietor. Filing for trademark infringement will be a civil remedy brought before the courts in trademark conflicts.
AN EXAMPLE FOR TRADEMARK CONFLICT
Apple Corps filed a lawsuit against Apple Computer for trademark infringement in 1978. Apple Corps is a Beatles-founded holding company and owner of their record label. Apple Records. Apple computers paid an undisclosed amount to Apple Corps in 1981 to settle the suit. The settlement amount was estimated to be US$50-250 million, but was later revealed to be $80,000. As per the settlement condition, Apple Computer agreed not to enter the music business, and Apple Corps agreed not to enter the computer business. Apple Corps sued Apple computers Again in 1989 claiming violation of the 1981 settlement. In 1991, another settlement was done these two companies involving payment of $26.5 million. Apple added a sample sound system called Chimes to the Macintosh operating system. Apple Corps held the right to use Apple on any “creative works whose principal content is music”, while Apple Computer held the right to use Apple on “goods or services. Apple Corps sued Apple computers again in September 2003 for breach of contract. Using the Apple logo in the creation and operation of Apple Computer’s iTunes Music Store, which Apple Corps contended was a violation of the previous agreement. The relationship between these two companies were improved in January 2007 Mac world conference. In Mac world conference Apple CEO Steve Jobs featured Beatles content heavily in his keynote presentation and demonstration of the iPhone.
A service mark is a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of a service rather than goods. The term ‘trademark’ is often referred to both trademarks and service marks. If you understand what is a service mark trademark and wish to get a detailed consultation or guidelines on it, just contact our trademark attorneys.
What kind of review will the USPTO conduct after I file my trademark application
Two main kinds of review can be expected from USPTO after filing an application for a trademark. The USPTO will first review your application to check whether you have completed the basic filing requirements or not. The application is then sent to an attorney in charge of examining it.
The attorney examines the application to make sure that all the necessary requirements including the payment of required fees are fulfilled by the applicant. There would be an intact examination which includes the search for conflicting trademarks (both registered and pending).
If the examining attorney, after the examination of the application decides to refuse the registration, he/she will send you a letter called an Office Action. This letter explains the reasons for the refusal mentioning the technical/procedural errors with your application. Very often, the applicant will be granted a chance to correct any inadequacy in the application, except in case of conflict with other trademarks. The examining attorney will contact you by email/phone if only minor corrections have to be made in the application. If a written Office Action is sent to you then you need to respond with the alterations within six months from the date of sending the mail. If not, it would lead to desertion of the application.
If your attempts fail to overcome the attorney’s objections to your application, he/she will issue a final refusal. To overcome the final refusal, an appeal can be made to the Trademark Trial and Appeal Board (TTAB) which is an administrative tribunal within the USPTO.
If your application passes through all the examination procedures, your mark will finally be published in the Official Gazette which renders a chance to the public to see whether your mark is damaging them in many means. If no objections are filed within 30 days of publication, the mark will normally be registered in 3-12 months which then will make you an official owner of a federally registered U.S trademark.
Generally, trademark rights merely regulate commercial use of the name. A trademark can be referred by a person for a legal, non-infringing motive as long as no more of the trademark is used than what is necessary for the purpose.
The trademark version of the “fair use” doctrine protects the trademark from unfair uses as is done by marketing competitors. Trademark owners set their own policies themselves as to how their trademark may be used. Following are some conventional ways in which a non-owner might be authorized to use a trademark:
- Use correct trademark and service mark symbols-The symbol ® be used only if the trademark is federally registered and it must be placed after the trademark name. It is not legal to use the symbol if the trademark is not federally registered with the USPTO. Instead TM must be used for trademarks and SM for service marks.
As the trademark appears in the USPTO registry, the trademark should not be abbreviated, hyphenated or misrepresented in any additional ways which would mislead or puzzle the customers. Hope you understand When and how can one party use of another’s trademark.
What is a trademark specimen and how does it related to goods and services
To register a trademark federally a proof (specimen) has to be submitted before the U.S Patent and Trademarks Office (USPTO). It should be an original example that clearly shows how the trademark will be used relating to the goods or services mentioned in your application.
- PRODUCTS OR GOODS SPECIMEN
If your business is products related, agreeable specimens include photographs of packaging labels, clothing tags, or labels on your products containers that apparently display your trademark.
In case of providing services, a sign, business card, website, brochure, advertisement etc connected with the service mentioned in the application can be submitted as specimen before USPTO. It must be ensured that a specimen has a reference to the service mentioned in the application. If you wish to know more about what is a trademark specimen related to your services, just call our trademark service wing.
Trademark and copyright registrations are both ways of protecting your intellectual property rights. However, there are certain basic differences between the two.
Trademark or Copyright Protection
Copyrights are a mode of protection for the authors of “original works of authorship” which include literary, artistic, musical, dramatic, and few other creative works. Copyright does not shield intellectual property such as titles, names, short phrases and slogans or mere contrast of typographic ornamentation, lettering or coloring. These kind of intangible properties are more adequately protected by trademarks.
A trademark shields a word, phrase, symbol or design that recognizes and characterizes different goods or services.
However, certain things such as complex logos require both trademark and copyright for its protection. Call our trademark desk can know more on How do I know if I need trademark or copyright protection.
Is an INDIAN Trademark registration valid outside the INDIA
An Indian trademark is valid only in India though the application made in India can be used for trademark registration in other countries. A trademark registered in India cannot get protection in foreign countries. A separate application has to be filed in each of the countries where the business is intended to be run. Convention priority can be claimed if the foreign application is filed within six months from applying for Indian registration.
For knowing more on Indian trademark registration validity, contact our trademark attorney get free consultation on Indian trademark registration validity outside India.
A trademark registration process includes publication of the trademark to check for oppositions from the public or other trademark owners. Through this publication third parties get a chance to contest the application to obstruct the trademark from being registered. Third parties can bring opposition measures to guard their own brands and trademarks, depending on the circumstances. If no trademark opposition is filed then the trademark progresses for its registration.
You can build rights in a mark by authentic or legal use of the mark. However, owning a federally registered trademark would do well to your business. Following are the several advantages you enjoy if your trademark is federally registered.
- Effective notice to the public of the registrant’s claim of the ownership of the trademark.
- A legal identity of the registrant’s ownership of the mark and his right to use the mark throughout the nation in relation with the goods or services mentioned in the registration application.
- The ability to bring an action in the federal court with regard to any infringement of the rights over the mark.
- The right to use the US registration as a ground to obtain registration in foreign countries.
- The right to file the registration with the Customs service to prevent import of infringing foreign goods.
Need of Registering a Trademark
It takes about 12 to 18 months to get the trademark application processed and registered. It depends on various factors like objection from Registry or third parties.
What is considered a trademark conflict
A trademark distinguishes a business, company, product or service from those of its competitors. Similar trademarks or designs often mislead consumers worldwide.
When a third-party is found to be using a trademark similar to yours, there are chances of the business owner getting involved in a trademark conflict. Thus, it is a conflict between two companies or business over similar trademarks.
Registered Trademark Benefits
There are several benefits of a registered trademark:
It gives a productive notice of the trademark throughout the country.
It can act as a clear evidence of the trademark ownership.
A registration in one country can help in the registration in other countries too.
In can put other people away from using your trademark without your permission.
It can help you to take legal action against someone who uses your trademark without your permission.
Call our trademark expert attorneys and know what are the benefits of a registered trademark.
Why do I need to search other trademarks
It is always advisable to determine whether another business or a company already has the trade mark which you intend to use for your business. It must be ensured so that you don’t violate any other trade mark rights.
In case you are found to be a violator then you could be forced by the law to stop using the trademark, which is the least punishment you could get. The punishment in such cases is often decided depending upon how long and how well you had used that trademark in your business.
Such punishments could be costly as you will have to change your products, brochures, name plates etc related to your business.
In case of violation of a globally registered trademark then the court would assume that you already knew about it before using it improperly. In such instances the punishment would be higher.
Also Read – Role of Trademark Attorney in Registration
Registering a Trademark gives the owner exclusive right over the mark for his goods/services. A person whose mark is registered can place ® near the mark, but using this symbol near an unregistered mark is an offense. A registered trademark being infringed can bring legal action against the infringer. The police can take legal action against the person who is infringing the rights of the registered user. An action can be taken for an unregistered trademark through common law of passing off. To proceed with passing off the burden of proof is heavier then the infringement.
A suit of infringement can be filed before the District Court or High Court, within the territorial jurisdiction. The owners have the right to initiate criminal prosecution against the infringers. The Act recognizes that criminal complaints can be filed for falsifying and falsely applying Trademark, applying false description, applying false indication of countries origin etc.
The Code of Criminal Procedure provides imprisonment starting from 6 months which can be extended to three years or fine of fifty thousand which can be extended to two lakhs or both.
Trademark Licensing in India
A trademark license can be defined as an agreement whereby the trademark owner authorizes another person or persons to use a mark. A trademark license usually, but not necessarily, contains several conditions such as exclusiveness, consideration, quality standards, the way in which the trademark may be used and consideration, quality standards, the way in which the trademark may be used. Recordal of trademark Licensing is not mandatory in India. If the mark is registered then a Registered User Agreement can be recorded with the Registrar of Trademarks. It is advisable to record the registered user agreement, as the User may not be able to initiate any Legal proceedings independently. The Trademark License is given for a specific period of time, at which the Trademark owner can transfer certain rights to a third party by way of License. Trademark License is given for a specific period of time, at which the Trademark owner can transfer certain rights to a third party by way of License.
Trademark Assignment in India
An assignment is a transfer of ownership of a trademark application or trademark registration from one entity to another. Section 2(b) of the Trademark Act 1999 describes an assignment as assignment in writing by the act of the parties concerned. Section 37 of Trademark Act gives the right of a registered proprietor to assign the Trademark for any consideration. The Trademark on being assigned gives the complete right over the mark to the assignee. Recordal of assignment with the Trademark Registry is compulsory in India. Recordal of assignment becomes compulsory as there is change in ownership of the Trademark, and all the rights of the mark automatically devolve to the new owner.
The difference between Trademark Assignment and Trademark License are:-
1. Assignment of a Trademark basically means selling the complete ownership. Licensing of Trademark means renting of the Trademark.
2. The assignment deed must be compulsorily in writing. License is not required to be in writing.
3. Assignment of Trademark can be made wholly or partly, License is giving the rights for a specific period of time
4. Assignment of trademark is not time sensitive, ones assigned the ownership is completely gone. Licensing is only for a limited period of time.
All the applications pertaining to Trademark is filed at Trademark Registry. The trademark registry is governed by the Central Government. There are five Trademark Registry in India with Mumbai as the head office all others as its branches. The four branches are Delhi, Kolkata, Ahmedabad and Chennai. The government has prescribed territorial limits for the respective Trademark Registry. The register of the Trademarks will contain all the details including names, address, description of registered user etc., the Registrar has full authority to keep the information fully in disks, floppies or any electronic medium.
The Trademark applicant must select the Trademark Registry as per the jurisdiction of the Registry. The jurisdiction of each registry is checked with the applicant’s place of business or residential address. If you wish to know more about Indian trademark registry, or any related topics feel free to call trademark attorneys of Biz and Legis.
The Trademark Act 1940 was the first statute law on Trademarks in India. Prior to this Act Trademark was governed by common Law.Registering a Trademark was obtained by giving a declaration to ownership under the Indian Registration Act 1908. The above said enactment was amended by Trade Marks Amendment Act 1943. Initially the Trademark registry was a part of patent office, which was later separated to constitute a separate trademark registry. Thereafter the Act was amended by the Trade marks Amendment Act 1946.
The Trademark Act 1940 was replaced by the Trade and Merchandise Act 1958. The Trade and Merchandise Act 1958 was brought into force on 25th November 1959. Later on few minor amendments were carried repealing and amending Act 1960.
The Trade and Merchandise Act, 1958 was revised by a new Trademark Act 1999. The new process of new Trademark Act started with an intention to improve the Trademark Act in the fast developing economy. The main intention is to bring developments in trading and commercial practices, globalization of trade and industry. The new bill passed by both the houses which was assented by the President and became a new Act called Trademarks Act 1999.
The Trademark Act 1999 is governed by Trademark Rules 2002, it came into effect on 15th September of 2003.The Indian Trademark is now fully compatible with International standards of TRIPS Agreement.
A trademark attorney is a professional who is having extensive knowledge of trademarks and usually deals with all the court matters regarding Trademark. A Trademark attorney assists the Trademark holder. They guide the Trademark owner in proper Trademark registration and also makes sure that there mark does not infringe others marks. Many of the companies have appointed attorneys to take care of the Trademark matters. Trademark Attorney makes sure about all the legal aspects to be taken care while filing a Trademark. Attorney evaluates the risks involved in adopting a mark. The attorney makes the client understand every step of the procedure, if the client wants to go forward with the mark, then the attorney files the application and communicates with the office as required.
Role of Trademark Attorney in Registration
An attorney can represent his client in the infringement or dilution case, which includes preparing of all the paper works and presenting the client in the court. An attorney will also help the client in bringing lawsuit against another party over Trademark infringement. If you have any doubts remaining on role of trademark attorney in registration, simply call our expert trademark service team.