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Trademarks: Is The Standard of Distinctiveness The Same All Over The World?

Posted on by trademarkangel

The growth of e-commerce has led to many brands that would have only been available to a small area of the global market to now be available worldwide. This causes business owners many challenges.

One of these challenges is how to produce, market, and protect a brand that will be sold in multiple jurisdictions across the globe. This is because each country has its own process, rules, and regulations that a brand owner must navigate to register a trademark that will protect their brands within that country.

In general, in order for a mark to be registered, it has to be distinctive in relation to the products and services for which registration is sought. But, how is this determined? Is the test for distinctiveness the same all over the world?

This article briefly explores the varying standards of distinctiveness in the United States, Canada, the United Kingdom, Germany, France, Singapore, Canada, and China.

The Purpose of the Distinctiveness Requirement for Trademarks

The fundamental requirement for trademark registration in most countries around the world is distinctiveness. This requirement is equivalent to the requirement for novelty for patent rights and originality for copyrights.

The primary goal of every trademark is to distinguish the products and services of one merchant from those of other merchants. Put another way, trademarks identify the source of the products and services they are associated with.

However, in order to do its job, the trademark itself must be sufficiently distinguishable from other trademarks. A trademark distinctiveness dictates everything from the mark’s ability to be registered to its ability to be enforced, as well as, whether or not it will remain valid once it has been registered.

Some marks achieve distinctiveness via their inherent nature, for example, Nike’s “swoosh” checkmark for sports apparel. But other marks only acquire distinctiveness as a result of marketing that, over time, forms a powerful association in the minds of the buying public.

For example, the term “Raisin Bran” is merely descriptive of the brand of cereal and would not be eligible for trademark registration had the Kellogg company not demonstrated (through evidence of use, including sales, advertising expenditures, and consumer surveys) that the buying public had come to associate the term with this particular Kellogg cereal.

The public’s distinct association of a trademark with a particular merchant is referred to as secondary meaning and can only be established over time.

How is Distinctiveness Determined in the United States?

In order to be registered as a trademark in the U.S., a mark has to be distinctive enough to effectively indicate the source of a product or service. To determine distinctiveness, examiners at the United States Patent & Trademark Office (USPTO) refer to a five-category spectrum of distinctiveness.

This spectrum of distinctiveness ranges from words, phrases, and symbols invented solely to be used as trademarks to words, phrases, and symbols that are so common that they are considered automatically ineligible for trademark protection, including:

 

  • Fanciful marks – automatically registrable with the USPTO as inherently distinctive trademarks. Examples include “Xerox”, “Google”, “Uber”, and “Kodak”.

 

  • Arbitrary marks – such as “Apple” for computers and “Galaxy” for mobile phones, which are not typically used to refer to the products and services being sold.

 

  • Suggestive marks – such as “iPad” for a tablet computer, “Coppertone” for sunscreen lotion or “Upwork” for freelancing platform, which are suggestive of a certain aspect or quality of the products and services being sold. Though suggestive marks are inherently registrable, the less distinctive they are, the more likely evidence of a secondary meaning will be required.

 

  • Descriptive marks – words and phrases, such as “Lightweight” or “Faster”, that only describe a certain quality or aspect of the products and services being sold. A descriptive mark is not eligible to be registered as a trademark unless it has acquired a secondary meaning through use, such as “Sharp” for televisions or “Windows” for computer software.

 

  • Generic marks – marks consisting solely of the common name for a product or service. For example, the term “Basket” for a store that sells baskets. Generic marks are void of distinctiveness and are ineligible for registration in the U.S. What’s more, a product or service can become so familiar in the marketplace, that the public associates it with an entire category of similar products and services. When this happens, a valid trademark can become generic and lose its validity. Examples of this are “Cellophane” and “Aspirin”.

Canada

Like in the U.S., distinctiveness is fundamental to trademark protection in Canada. Canada trademark law defines a “distinctive” trademark as one that distinguishes the products and services of one merchant from those of other merchants.

A trademark doesn’t have to be very well-known for it to be considered distinctive in Canada. Instead, a trademark’s distinctiveness depends on its ability to identify the underlying products or services as coming from one particular merchant, even if that particular merchant isn’t well-known.

Canadian Courts typically point to three fundamental requirements that have to be met for a trademark to be deemed distinctive:

  • The trademark and the products and service must be associated;
  • The owner must use this association while promoting and selling the products and services; and
  • The association must differentiate the merchant’s goods and services from those of other merchants.

Like in the U.S., a trademark distinctiveness falls within a spectrum that will dictate the scope of protection offered to it. Fanciful, arbitrary, or fictitious marks are viewed as inherently strong and distinctive trademarks deserving of a broad scope of protection.

Trademarks like “Xerox” and “Kodak” are considered very strong because they are terms that were specifically created to be used as trademarks. This characteristic makes them well-suited to distinguish the products and services of one merchant from those of other merchants.

On the other hand, marks that lack a distinctive character are only eligible for a limited scope of protection. These marks are regarded as weak because, for example, they are common everyday expressions, merely describe or suggest some aspect of the products and services being sold, or they are customarily used as names or surnames.

Canadian law also acknowledges that trademark distinctiveness isn’t necessarily inherent in every trademark, but can also be acquired through use or a secondary meaning.

However, unlike in some countries, a trademark in Canada does not automatically acquire distinctiveness after being used for a certain length of time. Instead, the applicant must prove that the trademark has acquired distinctiveness by submitting proof, such as examples of the trademark being used, sales and advertising data, and sample specimens.

Recently, Canada introduced new rules. Trademarks will now be examined for distinctiveness which will make it more difficult to register them. For example, if a trademark is not distinctive, it may be a ground for refusal.

The United Kingdom

In the United Kingdom (UK), distinctiveness is also a requirement for trademark registration. However, there is no real objective test to measure a trademark’s distinctiveness. Instead, the UK Intellectual Property Office will take into consideration all pertinent evidence when evaluating a mark’s distinctive character, including:

  • The share of the market garnered by the products and services being sold;
  • The amount spent on promoting the mark; and
  • The intensity and duration of the mark’s use as a designation of origin for the particular goods and services being sold.

In the UK, a trademark will be seen as inherently distinctive if it enables consumers to immediately recognize the origin of the goods and services being sold.

However, even if the mark is considered to lack distinctiveness, it can still be registered if, prior to the date of registration, it acquires distinctiveness throughout a significant portion of the geographic region where it will be marketed. For example, if the products and services will be marketed and sold in the UK, the applicant must submit proof that the mark has become distinctive throughout a substantial portion of Great Britain.

Germany

Like the UK, Germany will regard a mark as inherently distinctive if it is recognized by the buying public as an indication of origin. Conversely, a lack of distinctive character, as it relates to goods and services being sold, is a definite ground for rejection.

It should be noted that if a trademark refusal during examination is based on lack of distinctiveness, this is considered an “absolute” ground of refusal and examiners at the German Trademark Office are unlikely to change their mind once they have made a decision that a trademark is not distinctive. If this happens, it’s usually easier to re-file rather than fight the refusal.

If a mark is not distinctive, it can still be registered if the applicant can demonstrate that it has acquired distinctiveness through use, which will often require a consumer survey to be done and is extremely difficult to prove.

France

In France, a mark’s distinctive character is also evaluated from the consumer’s perspective. And a mark can only become a trademark if it possesses enough distinctive character to distinguish the products and services for which registration is being sought from those of other merchants.

France regards the following types of marks as completely void of any distinctive character:

  • Marks that only consist of generic terms used to refer to the associated goods and services;
  • Signs that only refer to certain aspects of the products and services being sold, such as its purpose, geographical origin, quality, or value; and
  • Signs that only refer to the shape or purpose of the product

Like in the UK, a mark that is not distinctive may acquire distinctiveness after the application for registration has been submitted. However, to prove acquired distinctiveness, the applicant must show evidence of a lengthy, noteworthy, and well-known period of use.

Singapore

For a mark to be registered in Singapore, it must be inherently distinctive or have acquired distinctiveness through use. To decide if a mark has the requisite distinctive character, the courts in Singapore will ask if the average consumer would recognize the mark as a trademark for the products and services being sold without being told.

Purely fanciful, inventive, and arbitrary marks are all inherently registrable in Singapore. But, marks of a purely laudatory nature are not.

A mark can nevertheless be registered if it acquires distinctiveness through use. To determine if the mark has acquired distinctiveness, several factors will be evaluated, including:

  • The share of the market the products and services have secured;
  • The intensity with which the mark has been used, how widespread its use has been, and for how long;
  • The amount of money spent on promoting the mark; and
  • The percentage of the buying public who can actually identify the vendor who provides the products and services being marketed under the mark.

China

In China, the following types of marks are barred from being registered as trademarks:

  • Marks that only consist of the generic name or product number;
  • Marks that simply describe the quality, ingredients, weight, or other aspects of a product or service; or
  • Marks that otherwise lacks distinctiveness.

Trademark examiners in China may also take into consideration the mark’s simplicity, complexity, particular composition, and color scheme, as well as, the nature of the packaging the mark is commonly displayed on and how well-known the mark has become.

What’s more, while a mark may acquire distinctiveness through usage, even a mark that has already acquired distinctiveness worldwide will still have to pass the test described above.

For More Information Contact Trademark Angel

If you are wondering if your trademark has the necessary distinctive character to properly protect your brand, call us to consult with a knowledgeable trademark attorney. We will be happy to answer any questions you have regarding an existing trademark registration or one that you would like to register.

Contact Trademark Angel in Canada at 226.246.2979, or visit our contact page to book an initial consultation.

 

What is a distinctive trademark? Trademark distinctiveness and why it matters

Posted on by trademarkangel

Trademark Distinctiveness

Article 1

In June of 2019, The Canadian Intellectual Property Office (CIPO) has implemented some changes to its examination procedure for trademark registration. One of these changes is the addition of an examination for distinctiveness.

Previously, applications for trademark registration were not subject to any examination for distinctiveness. Issues regarding a mark’s distinctiveness were only entertained with regard to someone opposing its registration.

It is currently unclear exactly what standard the CIPO will use to evaluate a mark’s distinctiveness, however, evidence of distinctiveness may certainly be required for any mark that is not inherently distinctive.

Furthermore, this new requirement will apply to all trademark applications, including those pending at the time the changes are implemented.

It is, therefore, important that you understand what makes a mark distinctive and that you choose a sufficiently distinctive trademark for your brand.

What is Distinctiveness?

Distinctiveness refers to a mark’s ability to distinguish one source of goods and services from others in the mind of the consumer. The following are some of the most distinctive marks in the world:

  • Apple
  • Microsoft
  • Google
  • Coca Cola
  • IBM
  • McDonald’s
  • Samsung
  • Toyota
  • General Electric
  • Facebook

Generic Marks, like the word “Vegetarian”, that might hang over a food stall in a food court, are at the opposite end of the spectrum. This may be the term used to describe the type of food on offer, but it has no distinctive character and cannot be used to distinguish anyone vegetarian food stall from another. And therefore, cannot be protected as a trademark.

Descriptive Marks merely describe a quality, feature, function, or characteristic of the goods and services offered. Examples of descriptive marks include:

  • Best Restaurant
  • Sixth Avenue Restaurant
  • Best Buy (for retail store)
  • Bank of America

Trademark registrars view descriptive marks sceptically and it may be impossible to register such marks in many countries.

Suggestive Marks usually suggest the quality or nature of the products or services, but don’t quite describe them. Some imagination is required to understand what the product is. Examples are:

  • Airbus (for aeroplanes)
  • KitchenAid (for kitchen appliances)
  • Greyhound (for bus transportation services)
  • Quick Stop (for convenience shop)
  • Coppertone (for tanning lotions)

Arbitrary Marks have a common meaning but it’s unrelated to the goods or services offered for sale under the mark. Examples of arbitrary marks are:

  • Apple (for computers and cell phones)
  • Comet (for cleaning preparations)
  • Subway (for fast food restaurants)
  • Google (for search engines)

Fanciful (or also called invented or coined) Marks are the most distinctive of all. These are terms, such as Exxon or Xerox, that were invented to be used as trademarks, but had no prior meaning. These marks are inherently distinctive and have the ability to distinguish their owners as soon as they are created. Some other examples of fanciful trademarks:

  • Keurig (for coffee brewers)
  • Zappos (for shoes)
  • Nikon (for electronic equipment)
  • Target (for retail shopping centre)

How to Choose a Distinctive Trademark

If you own a business and want to stand out from your competitors and protect your distinctiveness, you will want to register a trademark for your goods and services. However, your trademark registration will be rejected if the mark you wish to register is not sufficiently distinctive.

So, how can you choose a trademark that is distinctive enough to be registrable?

There are essentially 3 ways:

1.   Your Mark Must Be Inherently Distinctive

For your trademark to be considered inherently distinctive, it will be tested against the likelihood that other businesses would want to use the same or a similar trademark in relation to their goods and services.

Consequently, the more fanciful and out-of-the-box your trademark is in relation to the industry in which it will be used, the more distinctive it is. For example, if you operate a flower shop and want to use the words “floral” or “flowers” as a trademark, you will not meet the test, as other flower traders would also want to use these words to describe their own flower services.

However, if you were to use a made-up or fanciful mark like “Florixio”, “Floralia” or “Daffotulip” for your trademark, they would be more likely to be accepted, as they don’t have a meaning and it is unlikely that other floral business would choose the same word.

2.   Your Mark Must be Distinctive Within the Context That it is Used

There is some leniency if your trademark is not inherently distinctive. The registrar will also consider the extent to which your trademark is distinctive within the context of its intended use and any other relevant circumstances.

As an example, the word “Fineform” has been used to describe lingerie. While this mark is descriptive in nature, it is not commonly used in the world of lingerie. It was therefore held to be distinctive within the context that it was being used. Furthermore, when shown with evidence of sales and promotion using the mark, the company was able to register it as a trademark.

Similarly, if your floral shop was able to create a signature bouquet and wanted to use the trademark “Curvy & Blurry” to name it, you may be able to trademark this, as it is not a phrase typically used to describe a bouquet of flowers. But remember, you may have to show evidence of other relevant factors such as sales and promotions.

3.   Your Mark May Have Acquired Distinctiveness

Sometimes, a generic mark that would normally be rejected for not being distinctive can become factually distinctive due to extensive use by consumers, so much so that, in the minds of consumers, it is strongly associated with a particular set of goods or services. This is called acquired distinctiveness or secondary meaning.

To show acquired distinctiveness, you may be required to present evidence that consumers immediately recognize and associate the mark with your goods and services, and that you have made efforts to market it through sales and promotions. And in this way, a generic or descriptive the mark may be deemed registrable if it has sufficiently acquired distinctiveness.

A great example of this is Cadbury Chocolate. Cadbury was able to retain the exclusive right to use a particular shade of purple because, after 100 years, the color had become synonymous with their brand of chocolates.

In contrast, the agricultural cooperative Ocean Spray had only used the term “Cranberry Classic” in their fruit juice products and promotional activities for 2.5 years and, as a result, this was deemed not long enough for the trademark to be deemed distinctive in relation to their fruit juice products.

Another example of acquired distinctiveness is “Best Buy”, the trademark for the multinational retailer of consumer electronics. At first, this trademark was deemed “merely descriptive.” However, because the trademark has been in continuous use in association with the company’s retail stores since 1982 and is so widely known as a result of its vigorous marketing and advertising activities, multitude of stores, and prominence in the market for consumer electronics, the mark is now regarded as a distinctive trademark and immediately recognized by a considerable portion of the buying public in North America and abroad.

Summary

To summarize, no matter how fantastic your goods and services are, you are unlikely to do well in the marketplace unless they are easily distinguishable from those of your competitors, and more importantly, that this distinctiveness is protected.

As discussed above, to accomplish this you, you will need to show that your trademark is distinctive by proving that it is either:

  1. Inherently distinctive;
  2. Distinctive within the context that it is used; or
  3. Has acquired distinctiveness through use in the market

For help ensuring that the trademark you want to register for your brand meets the distinctiveness requirement for registration, contact Trademark Angel in Canada at 226.246.2979, or visit our contact page to book an initial consultation.

Differences Between Trademark and Copyright

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A common question asked by business owners, authors, and creative individuals is whether they need a copyright or a trademark to protect their work. This is because many aren’t aware of the differences between trademarks and copyright and which one is appropriate for what they want to protect.

But, the intellectual property rights you have in a trademark or copyright may be the most valuable asset you own. Therefore, they need to be protected. Understanding the differences between a copyright and a trademark is the first step in properly protecting your interests.

Intellectual Property

Intellectual property (IP) is at the core of copyright and trademark law. IP is embodied in creative works like writings, music, sculptures, paintings, or drawings; in words, symbols, and phrases; and even in new inventions and processes.

The three fundamental types of intellectual property are:

  1. Trademarks;
  2. Copyrights; and
  3. Patents

The rest of this article will focus on the difference between trademarks and copyrights only.

What is Copyright?

A copyright is a form of intellectual property protection provided for almost every kind of creative expression, including:

  • Paintings;
  • Sketches;
  • Writings;
  • Sheet music;
  • Video and audio recordings;
  • Sculptures;
  • Architectural designs;
  • Computer software; and
  • Other written or creative works

For copyright to exist in a work, it has to be fixed in a “tangible medium”, meaning that it must already exist in some perceptible form, such on paper, in a sound or video recording, or embodied in a painting or sculpture.

Copyright protection is available for both published and unpublished works and, in general, gives the owner of the copyright the legal right to exclude others from using or reproducing their work without the owner’s permission.

A copyright is automatically conferred the moment a work is created. However, there are certain advantages to registering a copyright, such as the ability to prove that you are the original creator through documentation.

A copyright grants the owner exclusive rights in the way that an idea is expressed. But, it does not confer any rights in the idea itself.

For instance, if you were to write an article about a particular car, the text in that article would be protected by copyright, preventing anyone else from using those same words in the same order. However, this doesn’t preclude someone else from writing their own original article about the same car, or from using or producing a car just like the one described in your article.

Lastly, copyrights do not protect short phrases, titles, or common design elements. These types of assets are usually protected as trademarks, which are often confused with copyrights.

What is a Trademark?

A trademark is a form of intellectual property protection that covers symbols, names, logos, words, and devices that are used to identify the goods or services of one business entity from the goods or services of another. Trademarks are intended to protect consumers from confusion and to protect the interests of the trademark holder as well.

When a business produces a particular product and registers a trademark for that product with the proper governmental agency, no other business can use that trademark in association with their own products. Examples of trademarks include:

  • “Google”;
  • “Coca-Cola”;
  • “Clorox”;
  • “Exxon”;
  • The Nike swoosh;
  • Starbucks’s mermaid;
  • The font used in the name “Walt Disney”;
  • The NBC peacock; and even
  • The NBC chimes.

In order to qualify as a trademark, the mark has to be distinguishable from other marks. So, when choosing your trademark, it is best to choose a word, symbol, or phrase that is distinctive.

Trademark protection accrues as soon as you begin to use a name, symbol, logo, etc. in association with your products or services. Thus, like a copyright, a trademark does not have to be registered. However, having your trademark registered with the proper government authority can be a huge advantage, especially when it comes to proving ownership and enforcing your rights in the trademark.

The Gray Area Between Trademark and Copyright Protection?

On the surface, trademarks and copyrights may appear to be almost the same thing. But, in reality, they are not.

A copyright protects the unique expression of an idea, while a trademark is intended to differentiate the particular goods and services of one company from those of another. The main source of confusion between trademarks and copyrights is the fact that a trademark can also be copyrighted if it also embodies a creative expression.

For example, the infamous Nike swoosh identifies products produced by the Nike company from similar products made by other companies, such as Adidas, Converse, or Puma. Thus, the Nike swoosh is a trademark. However, because (in its form and shape) it is a unique expression of an idea, it can also be protected by a copyright.

Conclusion

In simple terms, copyrights and trademarks are both types of intellectual property protection provided to businesses, authors, artists, and others. But, they differ in the subject matter of the protection they provide.

Copyrights grant exclusive rights to the authors of creative works, while trademarks generally protect marks used to indicate the source of goods and services, and are meant to protect the interests of consumers, as well as, the trademark holders.

However, whenever a trademark embodies creative originality, such as with a logo design or an illustrated character, it can be the subject of both a copyright and trademark protection.

For More Information, Contact Trademark Angel

To find out if a trademark or copyright is best to protect your intellectual property interests, call Trademark Angel 226.246.2979 or visit our contact page to request a consultation. We register trademarks in the US, Canada, the United Kingdom, the European Union,  Australia, China and India.

Cracking down trademark squatters under amended trademark law in China

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On April 23, 2019, the National People’s Congress of China has approved to amend the Trademark Law, 1982. The amendment involves 6 articles, and will be implemented from November 1, 2019. The amendment modified the Article 4 of Trademark Law which provides a clear guidance for foreign brands to crack down bad faith trademark squatters.

In recent years, the procedure of trademark application in China became easier and the cost involved was also reduced. The number of trademark applications in China increases every year. However, many of the applications/registrations are “zombies”, because they are never actually used. This raises the difficulty for getting a trademark registration, as the chance of rejection increases because of the similarity with prior registered or applied-for marks.

As China is a “first-to-file” country, some individuals and entities try to obtain a large number of trademarks by copying or imitating other parities’ trademarks, especially those overseas brands which have not entered into the Chinese market yet, with the intention to sell the trademarks to their real owners or claim trademark infringement maliciously. Due to this malpractice, it has been hard for the small brands’ owners to get their trademarks back through legal procedure when they face such situations.

The amendments of Trademark Law aim to crack down the counterfeit and bad faith registrations, and to strengthen the punishment of trademark infringement.

Below is a comparison of the articles before amendments (2013 version) and after amendments (2019 version).

Article 4.1

 

2013 Version 2019 Version
Any natural person, legal person or other organization that needs to obtain the exclusive right to use a trademark for its goods and services during production and business operations shall apply for trademark registration with the trademark office. Any natural person, legal person or other organization that needs to obtain the exclusive right to use a trademark for its goods or services during production and business operations shall apply for trademark registration with the trademark office. Any bad faith application for the registration of a trademark that is not intended for use shall be rejected.

 

Introducing a new clause in the first paragraph of Article 4: “Any bad faith application for the registration of a trademark that is not intended for use shall be rejected.”

Before amendment, Article 4.1 could not be used as a basis to reject, oppose or invalidate a trademark application/registration. Therefore, from the legal perspective, those individuals and companies that register and hoard trademarks to make profits in bad faith could not be prevented effectively from their malpractice.

After amendment, there is legal basis for the Trademark Office to reject such malicious trademark applications. A concerned party can also raise opposition or invalidation procedure based on this article.

However, it is still not clear that how to define “trademark not intended for use”. In practice, the number of trademark applications owned by the applicant as well as the applicant’s actual business scope are both taken into consideration.

It also should be noted that some companies may apply for a large number of trademarks for business strategy or IP right defense. Thus, the examination of a trademark application will also take into account whether the applicant has bad faith or not. If the trademark is legitimate and is applied as a defense mark, it is usually not deemed as bad faith registration.

In summary, the purposes of the recent amendments are very clear, 1) emphasizing trademark use; 2) cracking down bad faith trademark applications/registrations; and 3) enhancing trademark protection.

 

 

For more info click here.

Trademarks: First-to-use and First-to-file Countries

Posted on by trademarkangel

Trademarks are the face of your company or business to the marketplace. If you are in business, your company almost certainly has a trademark or trade name that you use on your products or in association with your services.

Almost anything can be a trademark––words such as Exxon, Pepsi, or Kodak, acronyms like NBC and IBM, a symbol such as McDonald’s golden arch, and even some scents like the flowery musk scent used in some Verizon stores. But, regardless of the form of your trademark, customers should be able to relate your trademark as the source of products or services that you offer to the market.

The more distinctive your trademark is, the more powerful it can be and more likely it is to be registered. In fact, on a scale from highly fanciful to purely generic, the more generic your trademark is, the less protection it will offer and the less registrable it becomes.

Registering Your Trademark

A trademark is not a shield that protects you from others who are trying to steal your mark or brand name. A trademark is a weapon that you have to actively use to prevent others from using your mark or brand name with its products or service.

There are benefits to registering a trademark, including the evidentiary value of having a registration that establishes the date your trademark was first used. Furthermore, trademark registration gives notice to the world that you are using a mark as a trademark in association with a particular set of goods and services in the particular jurisdiction it is registered in.

US or Canadian trademark rights accrue when you use your mark on goods or services in the marketplace. So, in the US and Canada, trademark rights go the first to use the mark in commerce. However, in a lot of other jurisdictions, trademarks are purely creatures of registrations, meaning that trademark rights go to the first to file a trademark application.

First-to-file vs. First-to-use Trademark Countries

In certain countries like China, Japan, Germany, the European Union, the principle of first-to-file establishes that the right to the trademark belongs to the business whose trademark application has the earliest date of filing. In these countries, the date of filing is important, not the date when the trademark was first used in commerce.

Most countries in the world are the first-to-file countries for trademark registration and, therefore, the right to register a trademark lies with the first to file a trademark application for that mark, regardless of who used it first.

On the contrary, countries like Canada, the United States, and Australia are those that adhere to the principle of first-to-use, which establishes that trademark rights accrue to the first business to use the mark in association with the sale of goods or services on the market.

In a first-to-use trademark country, as long as proof can be shown, the right to register a trademark belongs to the person who first used the mark in commerce, regardless of if (or when) an application to register the trademark was filed. In addition, unregistered (depending on the length of usage) or common law trademarks enjoy the legal rights (to a limited extent) to claim a trademark as compared to the filed or even registered trademarks.

So, what happens if two different businesses independently decide to use the same mark for the same or similar products in the same market?

Let’s imagine that Steve began using a trademark at the beginning of the year, but does not file an application to register the trademark. Later that year Bill came along and independently chose the same mark, for the same or similar products, and on the same market. At that time, Bill also filed an application to register the trademarks with the Trademarks Office. Then about 3 months later, Steve decides to file an application for the same trademark.

Who gets the trademark?

In a first-to-use jurisdiction, Steve would be awarded the trademark, even though he filed an application to register the mark 3 months after Bill. This is because Steve was the first to use the trademark.

where should i file my trademark

Just to explain: the Trademarks Office would approve the first filed trademark application, i.e. Bill’s trademark would be approved but Steve would be able to oppose registration of Bill’s trademark based on his earlier common law rights.  If Steve does not oppose or does not notice Bill’s trademark, then it will successfully register. In case of a US trademark, Steve would still be able to challenge Bill’s trademark on the basis of his prior use for the 5 years after registration (in the US), but after 5 years Steve will not longer be able to cancel Bill’s trademark based on his earlier use.

On the contrary, in a first-to-file county, Bill would normally be granted the trademark because he filed his application first.

The principle of first-to-file is much simpler in cases of disputes. This is because, once a trademark has been registered, there should be no more questions as to who it actually belongs to when a dispute arises (the exception of the 5-year window to challenge the mark in the US is described above). On the other hand, when the right to register a trademark is disputed, the first-to-use principle requires establishing the date when a mark was first used, which is often very complicated.

Sometimes the Answer Is Not That Simple

The European Union is a first to file jurisdiction.

As for the UK, there is a common law tort, called “Passing off” which gives some rights to unregistered trademark holders over the registered ones.

In many countries including the UK, challenging an earlier filed trademark can still be done based on earlier goodwill obtained through use. Goodwill obtained through use is often of limited value either because the evidence has been lost or because it is limited geographically.

In the UK, it’s possible to oppose a previously filed trademark application based on relative grounds (i.e. based on earlier trademark use).

What Does All Of This Mean For You?

You may have been selling your goods and services in the United States or Canada for many years and are now looking to export your products to other countries like China. But, what if someone has already registered a trademark for your brand name or business name in China?

In China, a first-to-file country, whoever filed the trademark application first will usually be granted the trademark, regardless of the fact that you have been using the mark in other markets for many years. One of the drawbacks associated with first-to-file trademark systems is that they inadvertently encourage “trademark squatters” to register potentially lucrative marks, only to hold them hostage to the highest bidder and without any intent to ever use the mark in commerce themselves.

This means that if your company was not the first to file in a first-to-file country like China, it may need to buy or license the trademark from the existing trademark owner or rebrand its products for that market. Perhaps the only way to avoid this problem is to make sure that you register your trademark in these countries before anyone else does.

Protecting Your Trademark Abroad

Trademarks protect your brand name and the name of your business. The first thing you need to do to protect your trademark is to seek protection in your home country or market.

Then, because IP rights, such as trademarks, are territorial and effective only in the jurisdictions where protection has been sought and obtained, you should also consider seeking a trademark in other countries where you intend to sell, manufacture, or do business in the future.

Furthermore, you should consider registering your trademark in countries that are well known for their counterfeit markets (China).

Trademark Angel can assist you with registering your trademarks in the countries where you need protection. For more information on how to protect your trademark, your brand, and your business name, call Trademark Angel at 226.246.2979 or visit our contact page to request a consultation.

What is the USPTO Post Registration Proof of Use Audit Program?

Posted on by trademarkangel

In contrast to some other jurisdictions, trademark rights in the United States are based on use in commerce. In order to register a trademark in the United States, you must demonstrate that you are actually using the trademark in commerce when conducting business or in relation to each of the products or services identified in your trademark application.

This can be achieved by filing a declaration testifying to the fact that the trademark is being used in commerce and by submitting evidence showing the trademark is being used on the products or services detailed in the application.

Normally, after your trademark has been registered, you are required to maintain your trademark registration by submitting at least one trademark specimen of use per trademark class, between the 5 and 6th years, between the 9th and 10th years, and then every 10 years thereon.

So, for example, if your trademark registration cover Class 18 (purses, wallets, backpacks, luggage, and suitcases), submitting to the US Patent and Trademark Office (USPTO) evidence of the trademark being used on a backpack, should be sufficient evidence in support of the registration for all of the goods in that trademark class.

The main objective of these post-registration maintenance requirements is to prevent the trademark register from becoming full of “dead wood” i.e. trademarks that are not being used. However, the USPTO has recently decided that these measures are simply not enough.

The Post Registration Proof of Use Audit Program

In 2017, concerned with evidence that 1) the above-mentioned requirements were not enough to keep the trademark registered from being bogged down with dead wood, 2) the trademark register did not accurately reflect trademarks in use in the United States for the product and service identified in registrations, and 3) that these circumstances would impose unnecessary costs and burdens on the public, the USPTO implemented the Post Registration Proof of Use Program in order to evaluate and enhance the accuracy and reliability of the US Trademark Register and to eliminate trademarks that are no longer in use.

Under the Post Registration Proof of Use Audit Program, the USPTO carries out random audits of Section 8 and Section 71 trademark renewal affidavits to ensure that trademark registrants meet the “use in commerce” requirements for a US trademark registration.

Registrants may now be required to respond to post-registration office actions by submitting evidence proving that the trademark under consideration is actually being used on all of the products or services claimed in the registration. If no proof is submitted, the USPTO may cancel the registration wholly or partially––regardless of whether the trademark specimens originally filed demonstrated the use of the trademark on any of the products or services claimed in the registration.

To clarify, after you register your trademark, The USPTO may randomly select your trademark to be audited, if you meet the following criteria:

  1. You filed a Section 8 or 71 declaration of use; and
  2. Your trademark is registered in at least one trademark class with four more goods or services

 

OR

 

Your trademark is registered in two or more classes with two or more goods or services in each trademark class (e.g. Class 18: luggage and suitcases and Class 25: clothing, shirts, shorts, pants, coats, and hats).

How will I know if my trademark registration has been chosen to be audited?

If your trademark registration is chosen to be audited, you or your trademark attorney will receive an office action from the USPTO notifying you that your trademark registration has been chosen to be audited and identifying two additional goods and services per trademark class for which proof of use must be provided.

If my registration is audited will I lose my trademark?

This depends on how and when you respond to the office action. You generally have 6 months from the date of the office action was issued to file a response. If you respond with sufficient proof of use before the deadline, the USPTO will send you a notice of acceptance and you will keep your trademark. However, if you fail to respond before the deadline, or fail to provide sufficient proof of use, the USPTO may cancel your trademark registration entirely or partially.

What is sufficient proof of use?

Sufficient proof of use is any evidence that clearly demonstrates how you are using your trademark on the goods, or in relation to the services detailed in your trademark registration. If you are offering goods, like T-shirts, sunglasses or any other types of product, you can submit a photograph of the product in packaging or with tags attached showing the trademark.

If you are offering a service, you can submit a screenshot of a website or a copy of a flyer or brochure that advertises your services. In addition, you can submit a photo of the trademark being used on signage advertising a retail store, restaurant, etc.

Bear in mind, however, the trademark cannot just appear on the product, for instance across the chest if a T-shirt or upon the product itself, it has to appear on the packaging. So, you will need to take a photo of the product in the packaging or with the tags attached.

What happens if I don’t respond in with acceptable proof of use?

If you do not respond to the USPTO office action with sufficient proof of use, or if you simply delete the goods and services that are being audited, you will receive a second office action from the USPTO asking for proof of use for ALL of the goods and services listed in your trademark registration for which proof of use has yet to be provided.

If after the second office action you still have not provided acceptable proof of use, you will receive a final office action from the USPTO notifying you that all of the goods and services for which acceptable proof of use has yet to be provided will be deleted from your trademark registration.

Contact Trademark Angel for Assistance

If your trademark is selected to be audited under the Post Registration Proof of Use Audit Program, it is very important that you provide acceptable proof of your trademark being used in commerce. If you do not provide acceptable proof of use, your entire trademark registration may be canceled. So, we strongly advise you that you take this office action seriously.

For help responding to an audit notification, or for more information regarding the USPTO’s Post-registration Audit Program, or contact Trademark Angel at 226.246.2979, or visit our contact page to book an initial consultation.

Using your trademark correctly as filed – How to avoid office action refusal from the USPTO

Posted on by trademarkangel

Using your trademark correctly as filed – how to avoid refusal from the USPTO

“Mark Differs on Drawing and Specimen”

It is important to note that the trademark must be used exactly as filed. It means that the trademark (called “drawing” by the USPTO) must be substantially the exact representation of the mark as intended to be used on products and services, as shown by the specimen (trademark in use is shown via specimen – a photograph of your products showing your brand).

Extraneous matter shown on the specimen that is not part of the mark (the symbol “TM,” ” the registration notice ®, the copyright notice ©, or informational matter such as net weight or contents) cannot show on a trademark drawing.

If you file for a standard character mark (word mark), it’s essential that there are no symbols or images that separate/break the wording or are integrated into the formulation.

Some examples:

  • Trademark filed: ALL STOP
  •  

Trademark used on products (specimen provided):ALL STOP

Conclusion: use of this logo will not be considered as use of the word mark ALL STOP as there is a design of a shield with caduceus inside and this design visually breaks or separates the wording “ALL STOP.” So if a trademark is filed for ALL STOP, but the logo above is used, the Trademarks Office will ask for different photographs. The takeaway: if you use a stylized version with an image or symbol inside your wording, it’s best to file for the logo, not wordmark.

  • Trademark Filed: FRESH HEALTHCARE

Trademark used:FRESH HEALTHCARE

Conclusion: The image is shown on the left and doesn’t interfere with the wording, so if the wordmark.

 

FRESH HEALTHCARE is filed, but the logo is used, then the use of the logoFRESH HEALTHCAREwill still support the use of the word mark.

It will be best to protect both the standard characters mark (FRESH HEALTHCARE and the logoFRESH HEALTHCAREorFRESH HEALTHCARE logo) and this is what our client did in this case.

  • Trademark filed: THE PACK.

Trademark used:THE PACK

Conclusion: The sword visually breaks the wording, so the use of the logo will not support the use of the word mark. Trademarks Office will ask to see the use of the mark THE PACK without any elements inside the wording.  Correct trademark to file was THE PACK.

  • Trademark filed: THREE ARROWS.

Trademark used: THREE ARROWS

Conclusion: The words THREE ARROWS cannot be separated or broken with another symbol or image, and in this case, three arrows appear between the words “THREE” and “ARROWS.” Trademarks Office will ask for substitute specimens in this case. Correct trademark to file was THREE ARROWS.

  • Trademark filed: ACTIVIVA

Trademark used: ACTIVIVA

Conclusion: The dot above the letter “i” is shown as a leaf and the three stylized drops to the left from the word “ACTIVIVA” are shown too close. So, the correct mark to file is the logo ACTIVIVA

  • Trademark Filed: STONE’S GOODS

Trademark used: STONE’S GOODS

Conclusion: The ping is shown on top of the wording and doesn’t interfere with the text, so if a word mark is filed, but the logo is used, then the use of the logo will still support the use of the word mark. It will be best to protect both the standard characters mark (STONE’S GOODS and the logo STONE’S GOODS), and this is what our client did in this case.

  • Trademark filed: L’AUTRE PEAU

Trademark used on products: L’AUTRE PEAU

Conclusion: The correct mark to file is the logo L’AUTRE PEAU logo as the leaves on the left from the word “PEAU” are too close so they form an integral part of the mark.

  • Trademark filed: KLENBLU

Trademark used: KLENBLU

Conclusion: Letters “N” and “B” are joined together and form a new symbol. They no longer show letters “N” and “B.” Also, there is a horizontal stroke above the letter “E.” The correct mark to file inKLENBLU this case is.

  • Trademark filed:Erzinkyan's Narine

Trademark used on products:ERA OF PROBIOTICS INC

Conclusion: The logo as registered has to match the logo as used (in this case the client added “ERA OF PROBIOTICS INC.” and “since 1949” inside the logo. Also, the font was different. Before the statement of use was filed, our client had to re-do the labels to show the logo precisely as registered. Even small things make a difference.

  • Trademark filed: girl design

Trademark used:     (girl design) displays the mark with flowers

Conclusion: Trademarks Office determined that the logo, as applied, displays the mark with flowers in the girl’s hair; however, the drawing (logo as filed) displays the mark without flowers in the girl’s hair. In this case, it’s possible to change the logo as presented to the logo as used (as the change was considered immaterial).

  • Trademark filed: GAMES2PEOPLE

Trademark used: GAMES TO PEOPLE

Conclusion: This is not acceptable as a trademark that is used is different from the trademark as filed.

  • Trademark filed: IBIYAYA

Trademark used:  IBIYAYA

Conclusion: This is not acceptable as the dot above the letter “i” it too stylized and shows a dog’s paw. This trademark IBIYAYAshould have been submitted:

→Some changes are acceptable. For example, filing in ALL CAPITAL LETTERS will allow you to use your mark in all CAPITAL letters, Initial Capital letters or all small letters. Also, you can use different fonts if a standard characters mark is filed. So, if IBIYAYA, standard characters word mark, is submitted, it can be used in any stylized font, as long as individual letters are not broken or parts of the letters are not shown as images or symbols.

IBIYAYA.. So this use is excellent and will support the use of IBIYAYA.

 

  • Mark filed: AYA SUSHI

Mark used:  AYA SUSHI

Conclusion: This is not acceptable as the mark that is used is “aya” even though Japanese characters read “sushi.” So, in this case, either a word mark AYA should be filed or the exact logo AYA SUSHIas used on products.

  • Mark filed: LIMO LINER

Mark used: LIMO LINER

Conclusion: It’s important to pay attention to small things. Even spaces between words matter. In this case, the mark should have been filed as LIMOLINER, the combined logo.

LIMO LINER or as two trademarks:LIMOLINER logo and LIMOLINER (and this is what was done in this case).

  • Trademark filed: Crafts of Egypt

Trademark used on products: Crafts of Egypt

Conclusion: The change is not material, so in this case, it’s possible to amend the registered trademark to match the one that is used (without spaces). We were able to change the client’s mark in this case.

Takeaway:

It’s especially important to pay attention to how you start using your mark if you initially filed for a standard character (word mark). Please don’t break your mark or stylize too many parts of your mark.

In some cases (as discussed in Girl design and Crafts of Egypt, it may be possible to change the trademark after filing if the change is not “material” but it’s not always possible, so it’s best to use your trademark precisely as it was presented.

If in doubt, please send us examples of your proposed use BEFORE you print your labels and order your products. We don’t charge for asking.

Also, we suggest you check out: Which trademark should I File? Word Mark or Logo?

Trade Secrets, Confidential Information, and Know-how: What Are The Differences?

Posted on by trademarkangel

The world is growing increasingly more accessible every day. Ideas can be shared with millions in an instant via the internet and more information is being published than ever before. In this increasingly complicated, competitive, and connected world, some information is best protected by keeping it secret rather than by traditional intellectual property rights.

Trademarks, copyrights, and patents are common intellectual property topics. On the other hand, trade secrets, know-how, and confidential information are a lot less popular, even though they can each play an important role in a business’s prosperity.

So, what are trade secrets, know-how, and confidential information, and how are they different?

Confidential Information

Some of the world’s most successful companies realized long ago that there is immense value in keeping certain intellectual assets confidential, and that by protecting their confidentiality, they could maintain a competitive advantage on the market.

Ideas, information, and processes that cannot be patented, reverse engineered, or the subject of copyright can be protected by keeping them confidential. So, one way to define confidential information is any information that a business does not want its competitors or the general public to know or have access to, such as customer lists, sales statistics, financial data, legal documents, new product proposals, marketing plans, and business contacts.

Furthermore, confidential information is often information embodied in methods and strategies used to manufacture products or provide services, such as formulas, recipes, and processes that may or may not meet the requirements for statutory protection. Trades secrets and know-how are both subsets of confidential information.

Trade Secrets

A simple definition of a trade secret is any formula, process, design, pattern, or commercial method that is not known or readily ascertainable by the general public and is subject to efforts to keep it secret. Examples of famous trade secrets include:

  • Google’s search engine algorithm
  • The recipes for Coca-Cola and Pepsi
  • The formula for the lubricant WD-40

Common types of trade secrets include:

  • Formulas, recipes, and processes
  • Devices, software, and products
  • Plans, designs, and patterns
  • Customer and supplier lists
  • Marketing and sales techniques and forecasts
  • Advertising strategies
  • Unannounced business relationships and opportunities
  • Personal information, such as the identities of key employees and their compensation

Trade secrets are legally protected from misappropriation. In general, a trade secret is misappropriated when a person:

  1. Acquires the trade secret through means that he or she knew or should have known was improper.
  2. Discloses or uses the trade secret without permission when he or she knew or should have known that the trade secret was acquired through improper means.

The owner of a trade secret can, amongst other things, sue a defendant to recover for economic losses caused by the misappropriation. This is usually measured by the owner’s lost profits or the defendant’s unjust enrichment. Furthermore, in some cases, punitive damages may also be awarded.

In general, in order for a trade secret to be protected, it must meet the following requirements:

  • Be commercially valuable
  • Not be known or readily ascertainable
  • Create or embody a competitive edge
  • Be subject to efforts to keep it secret

Trade secret protection lasts indefinitely, or until the trade secret is published or otherwise becomes generally known. Furthermore, there is no formal application or registration process required for a trade secret, but the owner must take reasonable steps to keep it secret.

Know-how

manufacturing of a product or performance of a service which is not readily available to the general public, that gives the acquirer a competitive advantage, and for which there is no precise or accurate description.

Know-how typically relates to the ability to:

  • Make the right business decisions
  • Manage people
  • Lead and motivate
  • Research
  • Design
  • Utilize and maintain machines, technologies, and data

The relationship between know-how and trade secrets is often misunderstood. First of all, while know-how refers to factual knowledge that is not generally known to the public and which may be difficult for others to imitate, that knowledge may not necessarily be secret. Trade secrets, as the name implies, need to be kept secret. Secondly, trade secrets usually include know-how.

Why Trade Secrets, Know-how, and Confidential Information Important

There are many advantages to keeping important technical information and knowledge secret from your competitors, but for the most part, it comes down to profit. By choosing not to disclose important information that gives it a competitive advantage, a company may be able to maintain monopolistic power in the market and/or build their market without competition.

In many cases, whether the subject matter can be patented or copyrighted makes no difference. This is because patents and copyrights only provide a limited monopoly. Sometimes, it may be in the best interest of those who have an idea that can be patented or information that can be copyrighted to keep it a secret rather than disclose it to the world only to receive a limited monopoly.

Take Coca-Cola as an example, one of the leaders in the beverage industry. Coca-Cola has successfully sold its products to millions of people all over the world while having never disclosed the Coca-Cola recipe to the public. To this day, the Coca-Cola recipe is still a mystery and no one knows exactly what ingredients and at what quantities are required to produce a bottle of Coca-Cola. This means that it is practically impossible for the company’s competitors to imitate the product.

What’s more, Coca-Cola has chosen not to patent its process. This is because, in order to be granted a patent for the process, the company would have to disclose the process and recipe by which Coca-Cola is made. Instead, the company has chosen to protect its competitive advantage by treating the recipe as a trade secret, which can theoretically be kept secret forever.

Conclusion

In conclusion, confidential information is private information that helps to ensure a company’s growth and development by providing it with a competitive edge. Trade secrets and know-how are both subsets of confidential information and only differ in the fact that trade secrets may be protected by law if reasonable efforts have been taken to protect its secrecy.

Most businesses, regardless of size, depending on some combination of trade secrets, know-how, and confidential information for their success. However, the challenge is to ensure that your organization takes the necessary steps to protect its valuable and sensitive information and/or to allow a court to enforce its rights in that information.

Most jurisdictions have laws prohibiting the theft or disclosure of trade secrets and other confidential information. We can review this with you and assist you with keeping your most sensitive information confidential. Call Trademark Angel in Canada at 226.246.2979, or visit our contact page to book an initial consultation.

What is Section 8 trademark declaration of use? When do I file Section 8 affidavit of use?

Posted on by trademarkangel

Congratulations, your trademark has been registered! Now, what? You only have to renew it every ten years, right?

Actually, there’s a bit more work to be done. After a mark is successfully registered, you, the owner of the mark, must prove that your mark has been used in commerce for a continuous period of five years. Or, if you mark has not been used continuously for five years, you have to provide an explanation as to why. To prove continuous use of your mark, you are required to file what is called a “Section 8 declaration” after the 5th year but before the 6th year after the mark has been registered.

If this declaration isn’t filed, the USPTO can cancel your trademark registration – meaning, you could lose your trademark for good – so it’s important to keep these dates in mind.

In addition, you may want to consider filing a Section 15 declaration at the same time. This isn’t required – and therefore you won’t be penalized if you don’t file it but this provides your trademark with “incontestability” status.

A more detailed explanation of the two declarations are below.

Section 8 Declaration

The purpose of the Section 8 declaration is to confirm that your trademark has been in continuous use for five years, or, if it has not been in continuous use for five years, an explanation as to why. This declaration is required to be filed by Section 8 of the Lantham Act; this means that if you fail to file the Section 8 declaration within the allowed time frame, your mark will eventually be cancelled by the USPTO.

What is required?

To file the Section 8 declaration, the owner of a registered trademark must sign the declaration attesting to continuous use of his mark (or provide an explanation why it has not been in continuous use), submit the government filing fee of $325, and provide specimens of use (i.e., unedited photographs) for each class of goods listed on his application. Any goods listed on the application that are not being sold under the registered mark must be deleted.

When does it have to be filed? Does it have to be filed more than once?

Owners of a registered mark are required to file a Section 8 declaration between the 5th and 6th year, and between the 9th and 10th year, after registration.

Section 15 Declaration

Unlike a Section 8 declaration, a Section 15 declaration is not required. Choosing not to file a Section 15 declaration will not have an adverse effect on your registered mark. However, trademark owners often voluntarily choose to file a Section 15 declaration because it allows the owner to obtain “incontestability” status for his trademark.

What does “incontestability” mean?

When a trademark is “incontestable,” this indicates to the court that there is conclusive evidence regarding the ownership, validity, registered status, and the owner’s exclusive right to use the trademark on the goods/services listed in his application. This means that anyone trying to oppose that trademark must proactively prove that these factors are not true. It may not sound like much, but in litigation, this can save the owner of a trademark the time and expense of proving ownership, validity, registered status, and the owner’s exclusive rights to use his mark. In addition, “incontestability” provides a strong defense against any claim that the mark is or has become “merely descriptive” of the goods and/or services provided by the mark.

However, “incontestability,” confusingly does not mean immunity from challenges. Even “incontestable” trademarks can be challenged on the following grounds:

  1. The trademark has been abandoned
  2. Registration of the trademark was obtained by fraud
  3. The trademark is being used to misrepresent the source of goods (for example, when a mark is selling goods made by another mark but re-branding those goods as its own)
  4. The infringing mark is using an individual’s name as its business name
  5. The infringing mark was used in commerce first
  6. The infringing mark was registered first
  7. The trademark is being used to violate U.S. Anti-Trust laws

As you can see, incontestability isn’t bullet-proof, but it does offer an added layer of protection, particularly against challenges based on descriptiveness, and can save an owner money if a litigation issue around the validity, ownership, registered status, or the owner’s exclusive right to use his mark ever arises.

What is required?

To qualify for “incontestability” status, the owner of a mark must show that:

  1. No final legal decision has been issued against the mark
  2. No litigation is pending regarding the mark
  3. A Section 15 declaration was timely filed, along with the $250 government filing fee
  4. The trademark is not nor has not become generic

However, keep in mind that a Section 15 declaration is not required to be filed; it has no effect on the validity of your trademark.

When does it have to be filed? Does it have to be filed more than once?

A Section 15 declaration only has to be filed once and can be filed at any time after the mark has been in continuous use for a five-year period.

We hope this has been helpful in explaining the purpose of Section 8 and Section 15 declarations. If you have any questions about the above, please feel free to contact the team at Trademark Angel.

Updated: Dec 30, 2024