Trademarks
A trademark identifies a company as the source of particular goods and services in the market place and bolsters its balance sheet over time. It brands the associated product the source company in the psyche of the public
Most countries require formal registration of a trademark as a precondition for pursuing legal action. The United States, Canada and other countries also recognize common law trademark rights, which means action can be taken to protect an unregistered trademark if it is in use. Still, common law trademarks generally offer the holder less legal protection than registered trademarks.
A trademark typically protects brand names and logos used on goods and services.
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements.
ATL [has also obtained protection for non-conventional trademarks which do not fall into these standard categories, such as those based on color, smell, or sound (like jingles).
A domain name and a trademark differ, although a trademark may be an importation component that is often overlooked. Registration of a domain name with a domain name registrar does not give you any trademark rights. Even if your company has a domain name with a domain name registrar, it may be required to surrender the domain name if it infringes someone else’s trademark rights.
US Trademark Registration
Trademark applications are filed with the United States Patent and Trademark Office. This is a U.S. government agency, commonly referred to as the USPTO. The registration process takes six to eight months.
When you file a trademark application with the USPTO, it will take about three to four months for them to initially review your application. A Trademark Examining Attorney will perform a review to determine whether the mark directly conflicts with a prior mark or is likely to cause confusion.
If the trademark registration is approved by the USPTO, the mark will be forwarded for publication. Every trademark that’s registered on the Principal Register is subject to a 30-day publication period. During this period, any member of the public can oppose your trademark application. An Opposition requires further response from the applicant. It is important for companies to monitor new registrations and file Oppositions when necessary to protect existing marks.
International Trademark Registration
A U.S. trademark registration extends only to the United States and its territories. ATL’s attorneys have established relationships with law firms in 53 countries and have filed international trademark applications through the Madrid Protocol system (WIPO). The Madrid Protocol is a system for registering and managing trademarks worldwide. An applicant may file a single application and pay one set of fees to apply for protection in up to 116 countries.
ATL can conduct an assessment to determine whether it is more economical for your company to file directly in foreign countries using foreign counsel or through the centralized Madrid Protocol filing system.
ATL’s international trademark services include:
- Monthly follow-up reports via e-mail on the status of each and every pending mark
- Timely responses to clerical office actions included with initial registration fees
- Coordination of multiple local attorneys for contested matters
- Processing foreign draft orders, legalization, notarization, etc. which may be required during the process