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TRADEMARK FREQUENTLY ASKED QUESTIONS (FAQs)

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What is a trademark?

The term Trademark is often used generically to refer to a mark in respect of good and/or services.

What is a service mark?

The term used to refer to a mark associated with the rendering of services only and not goods. However, the term Trademark is often used generically to refer to a mark in respect of good and/or services. Legislation in certain countries refers specifically to service marks and in other countries it does not.

Are there other kinds of trademarks?

What is the difference between a trademark and a trade name?

A sole proprietorship, partnership, corporate or business name, under which an individual, individuals or a company operates. A trade name may or may not also qualify as a Trademark depending on how the name is used.

What is the difference between an unregistered trademark and a registered trademark?

A Trademark owner may elect to adopt and use an unregistered Trademark for several reasons including the unregisterability of the mark for various reasons other than confusion with another unregistered or registered Trademark, the length of time the unregistered Trademark is required as compared to the time required to obtain a Trademark registration. A Trademark owner may not realize that their Trademark application has gone abandoned or that their Trademark registration has been cancelled or expunged, the likelihood of opposition or other challenge if registration is applied for, etc. However, unregistered Trademarks do not enjoy the benefit of registered Trademarks (see Benefits of Trademark Registration). A Trademark which has been successfully prosecuted becomes a registered Trademark which is typically entered in one or more official Trademark registers listing Trademarks that have afforded registered trademark rights.

What are the benefits of trademark registration?

  1. A trade-mark may in effect be reserved throughout the entirety of a country or region of countries by the filing of a trade-mark application in the country or region without the need to commence trade-mark use in the country or region prior to filing the application and often without the need for commencing trademark use in the country or region for several years, sometimes extendible to nine years or more, depending on the strategies employed. If the trademark is not so reserved, competitors who have either commenced use of a confusingly similar trade-mark, or applied for registration for a confusingly trademark before you depending on the country or region involved, will become the party entitled to registration of the trademark and your future proposed trade-mark will be lost.
  2. An application based on future proposed use may include long lists of goods and/or services to broadly reserve the trade-mark where your precise marketing plans may not yet be known. This strategy may also be employed so that competitors will not be able to determine what your initial or preferred product line or lines may be. Similarly, several trade-mark applications, each containing a different trade-mark, may be filed if you have not yet decided which name to proceed with and which will make it difficult for a competitor to determine which name you ultimately will proceed with. This strategy may also be used to prevent a competitor from adopting an obvious alternative mark.
  3. A trade-mark registration is almost without exception nation wide and not restricted to particular states, Provinces or areas within a particular country. Furthermore, continued trade-mark use within a vary small area of a country will generally continue to support a trade-mark registration covering the entirety of the country or region.
  4. In many countries there is no protection for a trade-mark other than through national or regional trade-mark legislation. This is often so for countries without a common law legal system.
  5. Counties with an English Common Law based legal system often provide some protection for unregistered trade-mark under a cause of action known as the tort of APassing Off=, wherein one party substantially passes off its goods or services for the goods or services of a competitor. However, this involves the aggrieved party proving an established reputation within a defined geographical region and any protection granted for the unregistered trade-mark is typically limited to within said geographical boundaries. Such Common Law rights are typically in addition to any rights obtained under national trade-mark laws in common law jurisdictions. Aggrieved trade-mark owners will often sue based on a number of different grounds and registrations including trade-mark infringement under national trade-mark legislation and passing off under Provincial, State or other local legislation.
  6. Remedies other than for trade-mark infringement per se, such as depreciation of goodwill, may only be available though national trade-mark legislation.
  7. A federal trade-mark registration is typically enforceable under Federal country wide legislation which may permit a trade-mark owner to obtain a country wide injunction, not only in the Province, State or local area where an unregistered trade-mark owner carries on business and has an established reputation.
  8. A national trade-mark registration provides written evidence of trade-mark ownership which is presumed valid in the absence of a Court Order to the contrary. Accordingly a trade-mark registration may be used to convince a trade-mark infringer to cease and desist from infringing trade-mark use and, in appropriate circumstances, might be useful to obtain interim and/or permanent injunctions. Alternatively, certificates of trade-mark registration may be used to satisfy legitimate trade-mark users such as licencees, franchisees and store owners of the proper ownership of the trade-mark or trade-marks.
  9. A trade-mark registration is often a complete defence to trade-mark infringement, and often with respect to passing off, with respect to the use of the mark, as registered. However, keep in mind that design marks are also typically covered under copyright legislation and treaties as artistic works, which use should be evaluated separately.
  10. Trade-mark registration deposited with some national customs and border agencies can be used to block or seize [pending Court Order] infringing foreign goods from being imported into the country of trade-mark registration [pending Court Order] .
  11. A federal trade-mark registration may entitle the registered owner to the use of a word, phrase or design prohibited by Provincial, State or local law.
  12. In many countries a trade-mark registration may be obtained without proving use prior to registration although the registration will be lost unless the mark is put into use somewhere within the country of registration within a given period of time.
  13. In countries where trade-mark use must be proven before a registration is granted, registration of a trade-mark in a foreign country can often be used as a basis for registration together with, or in the alternative, to proving use prior to registration, although registration may be lost if the mark is not put into use within a given period of time.
  14. In many countries a registered trade-mark becomes incontestable after five years of registration. These provisions provide that even if another party proves that it was in fact entitled to the use of the same or a confusingly similar trade-mark prior to the time that the trade-mark registrant either began to use the trade-mark and/or filed a trade-mark application for the trade-mark, that the trade-mark will not be cancelable unless the challenging party can prove that the owner of the registered trade-mark knew of the conflicting use before the trade-mark was adopted by the registered trade-mark owner. Other than through national trade-mark legislation there is often no defined period of time after which a trade-mark may no longer be cancelable based on earlier prior use. However, while an earlier trade-mark user may not be able to cancel an incontestible trade-mark registration, the earlier user may be able to obtain permission from the courts to use the trade-mark for a defined product line in a defined geographic area.
  15. Registration of a trade-mark provides notice on various national and regional trade-mark registers which legitimate competitors will typically search prior to adopting a trade-mark and/or applying for registration. Accordingly, expensive and complicated disputes which might otherwise accrue over a period of years may be avoided.
  16. A trade-mark registration may or may not increase the value of the goodwill of a brand but may well resolve issues and uncertainties which could affect the value of the brand on refinancing or sale.
  17. Properly searching, applying for and registering a trade-mark may prevent start up or roll out expenses from being needlessly incurred and wasted in the event that an unregistered trade-mark user is forced to change its trade-mark or decides to change the trade-mark to avoid risks subsequently discovered. Even if an unregistered trade-mark user is not sued, signage, advertising materials, packaging materials and other printed matter will need to be reordered at a minimum and product may need to be destroyed if the product cannot be economically re-branded. Please also keep in mind that exporting product from a country with an infringing trade-mark on the product may constitute trade-mark infringement in and of itself even if the products are sold in another country where registered trade-mark protection does not exist. This is to say nothing of the loss of goodwill built up in the brand as well as the cost of advertising incurred to date as well as the inconvenience or embarrassment of having to change a previously launched trade-mark at an inopportune time.

Must a trademark owner apply for registration?

Yes.  While a trademark may be used by another under a licence agreement, even an exclusive licence, the owner must apply.

Are there other ways to protect a trademark other than trademark registration?

Who can apply for trademark registration?

Does an individual need to be a resident or citizen of a country to apply for trademark registration?

Does any legal entity need to be registered in a country to apply for trademark registration?

On what basis or grounds may trademark be registered?

What types of trademarks may not be registered?

Can an unregistered trademark be protected?

Does incorporation or the registration of a sole proprietorship, partnership, business, doing business as (d.b.a.) Protect my business name?

What is the difference between a State trademark and a Federal trademark?

What is interstate commerce?

Is it necessary to indicate registered or unregistered trademark use?

What is the difference between TM and R?

How should a trademark be used?

Must a trademark be translated?

Is it necessary to conduct a pre-application (preliminary) trademark search?

Can a government trademark office tell me if a trademark is registerable before an application is filed?

When do trademark rights commence?

Does a domain name registration protect a trademark?

Does a trademark registration protect a corresponding domain name?

Does a trademark registration only protect the registered trademark for the goods and services specifically listed in the trademark registration certificate?

When you should an application for a registered trademark be filed?

What must be included in a trademark application?

What is trademark priority?

Must a trademark be used in a particular country before trademark registration is available in that country?

How long do I to prove national trademark use?

What are the steps/stages of a trademark application?

Can a trademark be reserved for future use?

Will more than one trademark application be required in each country or region?

How long does it take to obtain a registered trademark?

How much does it cost to obtain a registered trademark?

How long does a registered trademark last?

Can a registered trademark be renewed?

Can a registered trademark be canceled before renewal?

Can a trademark application be opposed by other than a national or regional trademark office?

Can a trademark application or registration be sold or otherwise assigned or transferred?

Is a trademark registration enforceable outside the country or region of registration?

What is a regional trademark?

Can the same trademark be registered to 2 or more different parties within the same country or region?

Can the same trademark be registered to 2 or more different arties within different countries or regions?

Is a trademark registration required to export goods?

Will a national or regional trademark office enforce my trademark registration?

What is trademark monitoring or watching?

What is a cease and desist letter?

Can a trademark owner permit or license a third party to use its trademark registration?

Can I get an international trademark registration?

What is the Madrid system, Madrid agreement and Madrid protocol?

Which countries and regions are signatories to the Madrid agreement and Madrid protocol?

Who can file an international application under the Madrid system?

What are the requirements for filing an international application under the Madrid system?

What are the steps/stages of a Madrid system application?

Can priority be claimed for a Madrid system international application?

What is the date of an international registration under the Madrid system?

How long does it take to obtain an international registration under the Madrid system?

How much does it cost to obtain an international registration under the Madrid system?

What is a notice of irregularity?