Things you should know before trademarking a logo
October 31, 2019 By Lalitha 0

Things you should know before trademarking a logo

Here, in this blog we will come to know about things you should know before trademarking a logo and also the requirements.

Things you should know before trademarking a logo

Chiefly, you have designed a logo to represent your business. Before sending that logo out into the market world, you should consider how to protect the design, and the business behind it, through correct use of trademark law. The changeover from concept to operation, from design to brand, is very crucial one.

A trademark is the one protects a word, slogan, image, logo or some combination that connects products with the maker of those products from being used by someone else. A trademark takes different shapes, as long as the mark you want to protect is distinctive.

The public must recognize the trademark as an identifier for the product‘s source. The perfect example of a trademark is the Nike swoosh symbol. When you see that mark on a pair of sneakers you immediately recognize those shoes as a Nike product.

Things that protects the trademarks

The main purpose of a trademark is to protect your brand identity in the marketplace and also build trust among the customers. To use another shoe company as an example, the Adidas trademark of three white stripes lets people know that the shoes they’re about to buy were designed and made by the Adidas Company. If a company actively selling shoes or things with two white stripes, people could easily think those shoes are Adidas shoes.

Consequently, not only does Adidas shoes lose money from the lost sale, but they also loss consumer confidence, if the similar looking shoes are lower in quality. The Trademark law states that your trademark is infringed by another company’s brand elements in order to confuse consumers. The companies that are infringing must stop using the similar trademark.

Who owns the logo trademark?    

        

Actually, Trademark ownership comes from those using the trademark for products in commerce. The logo designer will not be the trademark owner. The business owner who uses the trademark properly owns the trademark.

Your logo becomes a trademark when it appears on labels, packaging or the product itself and the public recognizes the company behind that particular combination of colours and shapes. Imagine you see a sign with golden arches; you probably are picturing a Happy Meal (also trademarked) or similar fast food item at a McDonald’s restaurant.

Things that you gain by registering your logo as a trademark

In United States, trademark rights begin to come into existence when the trademark is put into commercial use. This means that, as soon as you start to advertise your product with your logo, your logo is technically trademarked in the eyes of the law. But these trademark rights are geographically limited and difficult to enforce. So even though, you don’t have to go to the worry of officially registering your trademark with the U.S. Patent and other Trademark Office, you might want to only registered trademarks:

  • Are protected under the federal Anti-cyber-squatting Consumer Protection Act. This allows trademark owners to charge domain name registrants using identical or puzzling similar trademarks, things like Microsoft versus MikeRoweSoft.com
  • Can ask the U.S. Customs and Border Protection to automatically confiscate counterfeit and infringing imported goods.
  • Will make you to get trademark protection in other countries.
  • Permit you to bring an infringement and also to claim in federal instead of state court.
  • Award trademark owners presumptive ownership on a national level. That’s a fancy way of saying you are recognized as the owner of that trademark in the entire United States.
Things that qualify your logo for registration

Though the Patent Office approves hundreds of thousands of things trademark applications annually, not all trademarks are eligible for registration. Trademarks cannot be an offensive or misleading one. For example, the Applications for trademarks that are made similar to existing ones will be denied unless the products are completely unrelated, as in the case of things like Apple Computers and Apple Corps, the highest company owned by the Beatles. Trademarks that sound alike, mean the same or are visually similar to each other are likely to cause confusion among consumers and it cannot be registered.

You can start the process of trademarking a logo as soon as possible, by submitting an intent-to-use application before you start your business or product launches. The trademark cannot be officially be registered until the Patent Office completes its review and approval of an application.

The strongest trademarks things

The point of a trademark is to distinguish your product from the other competitors in the market. Therefore the trademark must be unique and distinctive. Trademarks are distinguished from weak to strong, with the strongest being the most easily protected by law because they are distinct in the minds of the public and are readily distinguishable in the market.

The strongest things tend to be spectacular or arbitrary.  Generic words or logos can’t be trademarked. For example, if you open a pizza restaurant and name it The Pizza Place, you’ll probably have a harder time trademarking your name than if you name it Tricycle Pizza.

Why you cannot register your logo as a trademark?

There are many reasons why you might choose not to pursue trademark registration, depending on your current and anticipated circumstances:

  • You are not sure how long your business will last. Applying for trademark registration is time intensive process, the average time taken will be 10 months to complete the process. The application is expensive, too, with a minimum filing fee of $325 if you prepare and submit the most basic application without legal counsel.
  • Your logo must change in a couple of years. Only the exact version that is registered is legally protected, and you could actually weaken the registered trademark’s rights by using variations. Also, logo that are registered as trademarks must continue to be used in order to retain their rights. If you don’t use your logo then there might not be a reason to register.
  • Your logo cannot be registered if it is similar to another already in existence somewhere else in the country.

Who can apply for Trademark?

 Any individual can apply for trademark registration to the Trademark Registry under the jurisdiction   of the business place of the applicant in India falls. In case of a company about that are be formed, anyone can apply in his/her name for succeeding assignment of the registration in the company’s favour.

Requirements for filing Trademark application:

  • Name of the activity or Firm name, Company name.
  • Name of the proprietor or the name of the partners
  • Address of the Business Place
  • 20 Labels of trade mark logo in visiting card size or lettering style or device
  • Description of goods to which the mark is applicable
  • Date of the first use of trade mark, if the mark is already in use.  The application must be filed as ‘proposed to be used’
    • Through this you can  also verify from your first invoice
      • If the product is for medicinal preparation, then you should verify from the Drug Endorsement made for the particular product in your drug license.
  • Authorization Form on Form TM-48 in stamp paper and s to be signed by the authorized signatory in case if the applicant wants to engage the services of a Trademark Attorney.
  • If it is a Private Ltd Company or a Public Limited Company, things like furnish the Memorandum and Articles of Association.

Stages involved in trademark registration

1. Allotment of application number

Upon receipt of an application for registration, a serial number is allotted to the same, which is used as a reference number for application. Same number is used as Trademark Registration Number if the mark is registered.

2. Preliminary Examination Report

The Registry examines the application and sends a Preliminary Examination Report (“PER”) together with Formalities Check Report (“FCR”) to the applicant wherein the Registrar would call upon the applicant to remedy the deficiencies and departmental objections. The applicant has to reply to the PER and FCR within a period of one month.

3. Hearing

If the Registrar is not satisfied with the application and reply to PER, he may call the applicant for the hearing if the applicant in his reply requested for the same. If the Registrar is satisfied in the hearing he would order advertisement.

4. Advertisement in Trademark Journal

Upon acceptance of the application the Registrar should cause the application with the conditions and limitations, if any, to be advertised in the trademark journal as accepted.

5. Objections, hearing and registration

Any person within 3 months from the date of advertisement or re-advertisement may in prescribed manner (Form TM 5) oppose the registration by paying prescribed fees; i.e.,2,500/-. The applicant shall file things like counter statement in prescribed manner (Form TM 6) by paying prescribed fees; i.e.,1,000/-. Any party desirous of hearing must file application in prescribed manner (Form TM 7) by filing prescribed fees; i.e.,500/-.

The Registrar after considering the written averments and after hearing, if any, decides as to the claims of the applicant and the opponent and thereafter if decision is in favour of the applicant, registers the trademark. Upon registration of the trademark, the Registrar shall issue registration certificate in prescribed form. Registration of the trademark shall be effective from the date of the application and shall be in force for the period of ten years from such date. In case any party to the opposition proceedings is aggrieved by the order of the Registrar, it may file an appeal against the same with the Tribunal.

 Grounds of refusal

Section 9 provides the absolute grounds for refusal of registration of any mark and section 11 provides for the relative grounds for refusal of registration. The rejection order is generally for the reason of attracting provisions of either section 9 or section 11.

Duration of a Trademark

The term of a trademark registration is for a period of 10 years. The renewal is possible only at a period of 10 years each. Unlike patents, copyrights or industrial design, trademark rights can last forever, if the owner continues to use the Trademark.

Remedies for Infringement and Passing-Off

Two types of remedies are available to the owner of a trademark for unauthorized use of his/her mark or its imitation by a third party. These remedies are: One is ‘action for infringement’ in case of a registered trademark and another one is ‘an action for passing off’ in the case of an unregistered trademark.

 The basic difference between these things are an action for infringement and an action for passing off is that the former is a legal remedy and the latter is a common law remedy. In order to establish infringement regarding to a registered trademark, it is necessary only to establish that the infringing mark is identical or similar to the registered mark and further no proof is required. In the case of a passing off action, proving that the marks are identical or similar alone is not sufficient. The use of the trademark likely to deceive or cause confusion.

International Trademark Protection

There is no system wherein a single trademark application is sufficient to protect the trademark right internationally.

 Moreover, it is possible to apply for multinational filing systems in certain regions in order to obtain trademark protection. For example, major countries like Belgium, Netherlands and Luxembourg have a single trademark registry, commonly referred as the Benelux Trademark Register.

Important forms under the Trade and Merchandise Act, 1958
Form TM – 01: Application for Trademark registration
Form TM – 05: Notice of Opposition to Application for Registration of a Trademark
Form TM – 06: Form of Counter Statement
Form TM – 12: Renewal of Registration of a Trademark
Form TM – 13: Restoration of Trademarks removed from the register for Non-payment of renewal fees
Form TM – 16: Request form for Correction of religious error or for Amendment
Form TM – 24: Request to register a Subsequent Proprietor of a Trademark
Form TM – 26: Application for Removal of Trademark from the register
Form TM – 38: Application by a registered proprietor for an additional or alteration of a regd. Trademark
Form TM – 46: Request for a Legal Proceeding Certificate
Form TM – 48: Form of Authorization of Agent in a matter of proceeding
Form TM – 54: Request for search.

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