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What should a foreign business know about filing a trademark in China?

Posted on by trademarkangel

This is the 3rd article in our series of 3 articles about Chinese trademarks. Read our 1st article here and our 2nd article here.

  1. General information about trademark application in China

 

  • “First-to-File” System: Whoever files a trademark application first, gets the eventual registration.
  • No evidence of use is required to get a registration.
  • Member of Paris Convention so it’s possible to claim priority if filing within 6 months from the initial date of the applicant’s home country.
  • Foreign applicants must employ Chinese local agents to file their trademark in China.
  • One year from filing the application to getting registration certificate: 9 months of examination, and then 3 months of publication period for opposition.
  • Duration of protection: 10 years and renewable.
  • The trademark is vulnerable to be cancelled by any third party if there is no use for consecutive three years from the date of registration.

 

  1. Classification of Goods and Services

China adopts 11th Edition of Nice Classification. There are 45 classes of goods and services.

China uses a guide of similar goods/services. In this guide, each class is divided into several sub-classes, and generally, goods/services are dissimilar in different sub-classes, unless there is especial illustration.

According to Chinese examination criteria, the designated goods/services of a trademark application should be selected from the standard descriptions listed in the Guide Book. Non-standard descriptions may lead to Non-Acceptance of the application.

It is necessary to cover broad sub-classes in order to protect the trademark as broadly as possible.

 

  1. General procedure of a trademark registration

1) Filing the trademark application

2) 9 months for examination by the China Trademark Office

3) 3 months of publication period for opposition

4) 1-2 months for obtaining registration certificate

General procedure of trademark registration – see diagram below

 

Chinese-trademark-registration-process

  1. Required information and documents

 

  • Duly signed Power of Attorney
  • Specimen of trademark
  • Full name and address of the applicant, Chinese version is necessary (will be provided by us)
  • For business applicants, the business license or good standing document or similar type of documents to show the existence status
  • For individual person applicants, a copy of passport or driver’s license
  • Designated goods/services
  • Original copy of priority document if claiming convention priority

 

  1. OEM (Original Equipment Manufacturer) business may file a trademark in China
    • OEM use of a brand is controversial to be regarded as a trademark use and possible infringement risk exists.
    • China is a first to file country. It is quite common that a third party (sometimes your manufacturer) files your trademarks in bad faith in China and then claims infringement over your unregistered brands.
    • It is very time consuming and costly to respond to infringement claim. It may happen that the fraudulent party may agree to assign the trademark to the true owners with some compensation or may not.

    The conclusion: a foreign trademark is not protected in China automatically. And filing a trademark timely is essential to minimize the risk of trademark piracy and the costs of getting the trademark back from the unauthorized registrant.

 

  1. Other tips for filing trademark application in China

 

  • Filing trademarks as soon as possible.
  • Clearance search is recommended before filing.
  • It could help to find out if there are any conflicting trademarks and evaluate the chances of achieving registration. Meanwhile, actions such as non-use cancellation and trademark purchase could be started at the early stage, to clear potential obstacles.
  • Chinese version of the brand is suggested to be filed.

Please contact us if you have any questions about filing in China.

Why you should file your trademark in China now

Posted on by trademarkangel

Guide to the Chinese Trademark Registration Process

Part 2

Why you should file your Chinese trademark now

This is the 2nd article in our series of 3 article about Chinese trademark. Read our 1st article here.

As the second largest economic entity in the world, China has a broad market, and Chinese market is becoming an important role player/catalyst in the global trade. Question arises whether companies need to register their trademarks in China? And if they do, why?

The following introduction to the current situation of trademark filing in China may help you deciding on Chinese trademarks.

  1. First- to-File system

China adopts First-to-File system. It means that the company/individual who files the application first, gets the registration. To get a registration the use of the trademark is not necessary. Thus, filing a trademark application in China as soon as possible is highly recommended.

  1. Money spent BEFORE saves money AFTER

As Chinese market remains growing, especially with the fast development of e-commerce, Chinese consumers have more chances and various ways to know foreign brands and buy foreign products.

Some opportunists take this chance to apply for trademark applications of foreign brands in a rush. There is a specific word describing this, it’s called “trademark squatting”. Trademark squatters register international brands in China anticipating their entry into China. Once they really enter China, the squatters try to sell the trademarks back to the brand owner to earn profits. Some trademark squatters even use the reputation of the international brand to establish their own companies and make a profit on the original brand’s value.

If you lose the advantage of prior filing, there will be not only the risk of trademark infringement, but also a lengthy battle against the squatting, which may last for years. Below is the estimated time for the procedures against the squatting:

12~18 months for opposition

9~12 months for cancellation based on non-use for consecutive three years

9~12 months for review of cancellation based on non-use for consecutive three years

12~18 months for invalidation

The battle against the squatting is not only time consuming, but also costly, and the result is not always satisfying. At the end, you need to pay high cost to buy your trademark back. While an early application may help you avoiding all the above consequences.

  1. The earlier the application is filed, the higher the chance of it getting registered

In recent years, with the development of the market, the number of trademark applications in China increased rapidly.  There were over 6.3 million of trademark applications filed in China in 2017. In 2021 there were almost 12 million trademark applications filed in China. During the past 2 years, 2022 and 2023, there were over 8 million applications filed, every year, in China. China has consistently ranked first in the world in the volume of trademark applications for many years.

Such large number of prior existing trademarks makes the later application difficult to be exempt from similarity conflict. Thus, if you file your trademark application earlier, you will have a higher chance to get the registration.

Don’t forget that if you rely on your domestic trademark, you can claim priority from your first filed application – it means that your Chinese application will backdate to the date your first trademark application was filed. But remember you have to file within 6 months of the original date of filing in your native country.

  1. Easy application and low price

China government pays a lot attention to the Intellectual Property (IP) field, and releases many policies and measures to encourage market entities to file IP applications.

To apply for trademark application in China, there is no need to provide evidence of use. You just need to submit the application form and business license or passport to show the existence status. It is very easy and not many formalities exist.

The cost of trademark application in China is also low. You only need to pay CNY 300 (appr. USD 48) of official fee and certain attorney fees.

Don’t delay filing your trademark in China. Contact us if you have any questions!

Trademark registration in China – Register trademark China

Posted on by trademarkangel

A Guide to the Chinese Trademark Registration Process – Part 1

Chinese articles series. Article 1 of 3.

 

When a trademark application is filed, the China Trademark Office (CTMO) will review the application. Then an official receipt will be issued (usually takes about 15-30 days for the official receipt to issue). The CTMO will then take a substantial examination which will last about 8 months. If everything goes smoothly, we will receive a preliminary publication notice within 9 months from the application date. After 3 months’ opposition period, the trademark will be approved for registration. The whole process is about 12 months in total.

 

Procedure and Timelines

Obtaining official receipt: around 15-30 days;

Obtaining the notification of publication: around 9 months;

Obtaining the notification of registration: around 12 months;

Obtaining the hard copy of the registration certificate: around 14 months.

 

China is a “first-to-file” country, unlike Canada or USA. It means that the first person to file a trademark application will generally have priority over a prior user of the trademark. In China, applications can be filed and registered without evidence of use.

 

Below is what should be done before filing a trademark in China:

 

Step 1: Conducting a Trademark Search

The CTMO official website provides a free search service. A more comprehensive search is charged most of the time by a Chinese trademark attorney. Never use any online commercial database to conduct the search. It is not reliable.

 

Step 2: Confirm How the Trademark will be filed

A word trademark or a logo trademark makes the result quite different. Generally, we always suggest filing the way it is actually used. Or, if budget is not of concern, file two separate trademarks with the two different forms. A word mark guarantees the broadest protection and a combined logo mark shows the genuine use avoid of possible non-use cancellation.

 

Step 3: Confirm the Goods/Services

China trademark classification system is based on the International NICE classification system but with some changes. China has developed a sub-classification system for each of the 45 classes.  The goods/services in each class are divided into several subclasses according to their function and/or raw materials and sales channels while services are divided based on their content and target consumers.  Generally, goods falling into the same subclasses are considered similar to each other.  Likewise, goods falling in different subclasses are not considered similar.

The sub-classification system not only means that goods/services are further categorized into different sub-classes of the main class heading, but all goods/services applied for having to comply with the goods/services listed in the Chinese Sub-classification Book.  If the goods/services applied for are not specifically listed they are likely to be rejected.  Unfortunately, unlike many other countries, this often means selecting goods/services that are “closest” to the specific goods of interest – as the list is somewhat limited.

 

This is why we always modify your selected items of goods/services. Actually, you can also stick to the non-standard items if you don’t mind receiving a possible office action. There is still a chance for the non-standard item to be accepted by the examiner. If not, an office action will be issued to modify the specification. It will a) delay the examination period for around two months and b) additional cost may be charged.

 

In addition, as an additional fee will be charged for items in excess of 10, we usually suggest you limit the items to 10 per class.

 

Step 4: Confirm the name and address of the applicant both in English and Chinese

The name and address of the applicant must be strictly identical to those of the company incorporation certificate or the passport of an individual applicant.

The Chinese translation of the name and address is a compulsory requirement. If you do not have one, ask me and I will help to translate.

 
Trademark Registration in China:

Step 5: Prepare the required documents

When all of the above all confirmed, I will send a power of attorney for your sign. Here are all the documents required for the application:

 

Document 1. Application Form (not required by the online application);

Document 2. Scanned copy of the Power of Attorney (POA) signed by the applicant;

Document 3. Scanned copy of the applicant’s certificate of incorporation/certificate of good standing; (passport for individual applicants).

 

When all the documents are prepared, your trademark is ready to be submitted.

As China is a first-to-file country, a prior application date means a lot for a trademark registration process in China. Your trademark will usually be filed within 2 working days.

 

Trademark registration in China – Register trademark China

What should tech startups do to legally protect their business?

Posted on by trademarkangel

Many new and aspiring business owners are reluctant to share their new business idea. The is of course a risk that by sharing an idea with others that the idea could be copied and produced as a competitor. While this fear may be founded, you should understand how you can legally protect your startup, as there are a few options.

Over the last 5 years, the rate of business creation within the tech industry has continued to increase so it’s important for all new ventures to protect their identity.

Can a business startup protect an idea?

You cannot protect a business idea. This comes as a surprise to many new business owners. While a business idea cannot be protected, creative expressions of an idea can be protected. Examples of artistic expressions can be a painting, an article, a song, music or a poem. All of these are protected by copyright. A business idea itself is not considered an artistic work and cannot be protected.

The name, however, under which a startup proposes to trade could be registrable as a trademark.

Similarly, if the business idea is to produce or make a new and innovative product then, this creation/invention may be protected through a patent. Every case is individual and should be referred to an expert before a decision is made.

How can you protect a startup?

Use a non-disclosure agreement (NDA) – As in most cases, you cannot protect a business idea, an NDA is a great option and can be used to prevent other people and companies from sharing the idea. Developers, employees and others with whom you share your idea with can be bound by an NDA.

An NDA is a legal contract between two people or entities that states what information will be shared between them and what information cannot be shared with other people or companies.

Some cautious tech startups have a policy of getting everyone to sign an NDA including investors. Some consider this to be an unnecessary step so it is advisable that you remain flexible when dealing with investors, especially when they have a large stake in your business.

Some cautious tech startups have a policy of getting everyone to sign an NDA including investors. Some consider this to be an unnecessary step so it is advisable that you remain flexible when dealing with investors, especially when they have a large stake in your business.

Start building your business beyond the idea stage – As a tech startup, you will have to create an initial base code, which could be eligible for copyright protection. If you hire developers to work for you, then you should ensure to assign the copyright to yourself as the business owner. Copyright protection relies on clear ownership and you should keep all records that prove creation and/or authorship so that the copyright can be verified.

One area for consideration is that open source frameworks and platforms (WordPress, Drupal and others) are copyright of their creators and are available under specific creative licenses. You should know that if you are to build any part of your startup using these or other open source tools, you will not be protected under copyright laws.

Consider filing a patent application if possible – A patent protects new inventions or improvements to these inventions that have unique features or elements. However, in the UK and the EU, computer software programs usually cannot be protected by filing a patent. There are exceptions to this rule, but you have to create a new method or coding process to obtain a patent.

A software app or part of it may fulfill the necessary requirements to obtain patent protection. It is best to get advice from an intellectual property professional who can advise you on whether your tech startup is protectable through a patent.

If you are in the process of creating a totally innovative product that didn’t exist before, then a patent may be necessary so that you can aim to prevent others from making unauthorized use of your innovation.

Patents are usually quite expensive so you should allocate a budget for a patent application.

Protect your brand by a trademark – Unfortunately, many successful startup ventures don’t bother with filing a trademark and allow others to use their brands. By filing a trademark, a startup may prevent others from using and registering identical or similar names and this will avoid trademark confusion among potential customers.

A trademark will make it easier to enforce your rights and to stop copycats in the markets you plan to trade within. You can trademark your name, logo, slogan and even a specific design. By registering a trademark in all jurisdictions where you trade and make business, you will protect yourself from being copied by others.

Having a tech startup can be hard work. Knowing how you can protect it is important. If you are in the position to file for a trademark, use our free trademark search service to the first check if a similar or existing trademark has already been filed. Our expert team offer cheap trademark registration in the USA, Canada, EU, UK and now Australia too, to support your business, whatever stage it may be in.

Launch before you file or file before you launch?

Posted on by trademarkangel

When is the best time to file a trademark?

–Does the chicken come before egg or the egg before the chicken?–

We are often asked this question: When is the best time to file trademark?

This question is especially important for Amazon sellers as they have the additional pressure of getting into the Amazon Brand Registry. When can you get into the Brand Registry? When you have a registered trademark. So, that means the sooner you file, the sooner you will get a registered trademark, right?

Not so fast.

We’ve seen this a lot: Business owners and Amazon sellers feel this itch and unstoppable desire to file their trademark as soon as possible without really doing a proper analysis. They want to file for everything, i.e., keep their application as broad as possible because they don’t know what they will be selling in a year.

But, we don’t recommend jumping right in.

Yes, it is important to file as soon as possible. But, before a trademark can be filed, there are two important things that you must consider.

  1. It is essential to determine what products you will sell and what services you will offer. You see, in the US and Canada, your trademark will not register until use of the mark commences on all of the products and services listed in your trademark application. However, for Australian, EU and UK trademarks, use of the mark before registration is not required. So, if you file in Australia, the EU, or the UK, you can file trademark and achieve registration without having to use the mark before it registers.

In Canada or the US, before a trademark is filed, a business owner must come up with a business plan and determine what goods and/or services will be included in the trademark application.

Tip: Make a list of products that you want to include in your trademark application. The list must be fairly detailed: instead of “food products,” you must specify which kind of foods you want to sell, such as “chocolate” or “canned meat.” Don’t worry about determining which classes these products belong to – that’s our job – but focus on making a complete and detailed list of goods you’re currently selling, or plan on selling in the near future. You can also read our article that helps you understand how to list products and services.

  1. The business owner must also decide who will be the owner of the trademark. We discuss this at length in a separate article, but it’s best to file a trademark in the right entity name. You may already be aware of this, but: a US trademark application based on “intent to use” can only be transferred to another entity once use of the trademark begins. What does that mean?

Let’s say you rush and file your new trademark in your personal name, before incorporating. You plan to launch it in 6 months. Then in 2 months you incorporate or form an LLC and decide to put your trademark under your corporation or LLC. You open your Amazon seller account under your corporation or LLC name. Now, you are ready to sell, but you have a problem: your trademark was filed by you personally and you can only transfer the mark once you start selling products under your personal name. If your Amazon account has been opened under your LLC or company name, it may be difficult to make that first sale under your personal name, and without any sales, you cannot transfer your “intent to use” application to your LLC. You are caught in a Catch 22.

Tip: Stop and think carefully, who will be the owner of your new trademark?

Many people ask: Trademarks are expensive, shouldn’t I wait until I make money and then file an application? After all, I have common law rights.

Yes, it  is true you have common law rights even if you don’t file a trademark. So why bother? The truth is: it is much more difficult and expensive to prove common law rights if you don’t have a registered trademark. In addition, you can’t get into the Amazon Brand Registry with an unregistered trademark.

The real danger in waiting to file lies in the fact that another individual or company can easily file for a trademark that is almost identical to yours while you wait to make sales. This means that you should file a trademark as soon as you come up with a trademark, decide what products you will sell and who the owner of the trademark will be. Do not delay. Do it yourself if you know how, go to your trademark lawyer, or use an online filing service but don’t delay.

We caution against delays given the risks involved. Take the example of a real client (whose name and suggested trademark we have changed): This past May, John came to us needing our assistance with registering a trademark. He wanted to trademark GYLA PRO STORE for notepads and writing paper. He decided to wait a little until he made his first sale as it’s a little cheaper to file a trademark if it is based on actual use. We told him that waiting is dangerous and that we should file right away. A month later, John made his first sale and we filed an application based on actual use on June 10. A few months later we learnt that another company, Company A, filed for an almost identical trademark GYLO PRO for identical products on June 7.

Instead of an easy trademark registration, this will now turn into a complicated and expensive process. Our client’s mark will be refused by the Trademarks Office based on that earlier June 7 filing. Luckily, as our client’s date of first use precedes Company A’s date of first use, we will be able to oppose the registration of this other trademark.

However, oppositions are very expensive and our client does not have the funds for an opposition. What are his options?  We could write a cease and desist letter and threaten Company A with a lawsuit if Company A does not abandon the trademark and re-brand. We could also threaten to oppose. What if the other side ignores us? Our client could still use the trademark but won’t be able to register it. Therefore, he will not be able to get into the Amazon Brand Registry. In practical terms, this means that he will have to re-brand, as he needs a registered trademark to get into the Amazon Brand Registry. Had he filed in May when we recommended, this problem would not have come up.

The takeaway?  These are the steps we advise that you follow:

– Pick your trademark and make sure it is solid from a marketing perspective, that it has a good vibe, that there are no negative connotations or hidden negative meanings associated with your mark which you are not aware of. Use Google and translate your mark to make sure you are not missing some hidden meaning.

– Use namechk.com to make sure your trademark is available on social media sites and that the domain name is available.

– Decide on the products that you will sell or on the services that you will offer or both.

– Do a proper trademark search to make sure the name can be used and can be trademarked in the country where you are interested in operating. It’s a good idea to do a broader search (in other words, search for your mark in more than one country) in case you decide to expand your business later. We offer free trademark searches but of course there are other companies who offer these services, and, while it’s not recommended, you can also conduct a search yourself.

– Determine who the applicant will be: an individual or a business entity?

– Decide where you are going to file. Will you only file in the US? Or perhaps you expect to do business in Australia?

– Decide on your trademark budget. This is very important as the cost of trademarking can vary (from $500 to $5000).

– Decide how you are going to file: by yourself, using an online filing service, or through an agency.

– File your trademark.

Don’t wait to make the first sale, don’t wait until your business takes off. It is much cheaper to file early than to file later and then chase those who beat you to the Trademarks Office by a few days. 

Remember that trademarking is a long process so the sooner you file, the sooner you will proceed to registration.

Another consideration: for service businesses, coaches, consultants, advisors, and accountants, your trademark is your business, so waiting to file is not a good idea. Your brand identity is your most important asset, so protecting this is crucial. If your brand is stolen by somebody else because you chose to wait to file your trademark, it can turn into a big headache.

Register your trademark sooner rather than later if you’re serious about your business. Consider trademarking your brand as a valuable investment that will pay off as your business grows.

Trademark registration in Australia: how to register a trademark in Australia?

Posted on by trademarkangel

How to register a trademark in Australia

The purpose of filing a trademark in Australia is to give you the exclusive rights in Australia to use a name or logo or combination of both in relation to goods or services that you supply in Australia.

There are four main steps you need to take to register a trademark in Australia. We advise the following trademark registration process to most people, but if you require a Headstart application, the process is slightly different.

Step 1. Complete a trademark search

Before filing your application for a trademark in Australia, a thorough trademark search should be completed.

A thorough trademark search will improve your chances at successfully registering a trademark in Australia.

A trademark search will ensure that your preferred name/logo/combination is not too similar to other trademarks registered in Australia. If your trademark is too similar you will not only have issues when it comes to registering your trademark in Australia but you might also face opposition or office action from IP Australia because of infringing on another businesses rights.

We recommend that even if you have been operating under your current ‘branding’ for some time that you conduct a thorough trademark search. Given that the registration of your trademark in Australia can take several months and is a non-refundable process, we recommend that you conduct a thorough trademark search before filing an application to ensure your trademark is available. This process will reduce the risk of an unsuccessful application process.

Step 2. Filing the application and choosing classes

As your trademark (name, logo or combination of both) will be used exclusively to provide either goods or services in Australia, you need to advise IP Australia of what those goods or services are.

All goods and services fall into ‘classes’ that this international agreement has outlined. There are 45 classes in total, the first 34 cover goods and the last ten services. When you register a trademark in Australia you need to outline which of these classes your goods or services fall into.

Step 3. Examination of your trademark application

Once your application is filed IP Australia must examine all of the details to ensure that the basic requirements are met and to ensure your trademark is registrable

This process can take up to six months. Once the examination process has been completed we will receive either a notice of acceptance if the trademark has been approved or an adverse report if there are any issues found with the trademark.

Step 4. Advertisement of your trademark

Once IP Australia has approved your trademark application your trademark will be advertised in Australia’s ‘Official Journal of Trademarks’. The public will then have a period of two months to lodge an objection to your trademark application. If someone opposes your trademark they must file a statement that sets out the grounds and particulars that they are opposing your trademark on.

If nobody opposes your trademark in these two months your trademark will progress to full registration.  This process will take up to 8 months.

 

What are confusingly similar trademarks?

Posted on by trademarkangel

Simplified guide. No legal jargon, promised!

We are often asked questions like “what is trademark confusion? Can I just add one letter or misspell my trademark to avoid similarity with another brand?”

The standard test of confusion is similar in many countries including Canada and the USA.  Likelihood of confusion is determined by taking an average consumer of average intelligence with average memory, who first sees one mark in association with the products, and then at a later time, when seeing the second mark, is confused into believing that the source of the products is the same.

The test is whether the marks are similar visually or orally, so misspelling a trademark doesn’t help if it’s still pronounced similarly to an existing trademark.

So, to put this in an example: you come to a store looking for yoga pants. You find great yoga pants that are called PANTYOG. It’s irrelevant whether you buy these pants or not. You come back to the same store a week later and you see exercise bands that are called PANT-YOG. You vaguely remember that you already saw yoga pants by the same name and you liked those pants. You decide to buy these exercise bands as you believe they are made by the same company that produces yoga pants. You are now “confused” as to the source of the product. When Trademarks Office assesses your trademark for likelihood of confusion, they are trying to put your trademark through this “test” to see if an average consumer with imperfect memory is likely to be confused.

Note: The products don’t need to be the same they can be simply related or similar. If products are not related, there should be no likelihood of confusion.

If you came to the same store and noticed car oil for sale by the name PANTYOG, it’s unlikely you would think that the same company that makes yoga pants also make car oil, so it’s unlikely that you would be confused about the source of the product.

This example is over-simplified, but it gives a good example of what likelihood of confusion is. That’s why if you know that there is a similar trademark for very similar products, it’s best to find another name.

It may not be enough to differentiate from a similar trademark, if you add word fillers, like “my”, “best”, “products”, “brands”, “company”, “solutions”.

Some instructive guidelines on how to make a trademark stronger are suggested below –

  1. If you want to file for DIARIO for calendars, and there is a trademark for DIARRIO for stationery, adding the above words will not make your trademark stronger as those words will be given very little weight by the Trademark Examiner. Instead, try to pick another name or change the existing name, for example, INFINITY DIARIO will have higher chances as another unique word is added.

 

  1. If you sell cosmetics, the following words are descriptive and weak and are usually NOT enough to differentiate from a similar mark: “green”, “cosmetics”, “wellness”, “health”, “beauty”.

So, if you want to trademark CHARCOAL LASHES for mascara and there is a trademark CHARCOAL LASHES for false lashes, changing your trademark to CHARCOAL LASHES MASCARA or CHARCOAL LASHES BEAUTY will not make your trademark stronger. Instead, try to find a different name or change the existing name by replacing one word with another one, for example, BLACK NIGHT LASHES.

  1. If you sell clothing or exercise equipment, the following words in your trademark are considered fillers: “clothing”, “apparel”, “gear”, “sports equipment”.

For example, if you want to trademark BEAST IN YOU for t-shirts and there is a trademark BEASTY YOU for pants, then adding CLOTHING to your trademark (BEAST IN YOU CLOTHING) will not necessarily make your trademark stronger. Instead, you should try to come up with another name or add another unique word to your trademark.

  1. If you sell kitchen appliances/utensils, words that describe those products are weak and will be given less weight than unique words. For example, these words are weak and will not make your mark stronger: “home”, “kitchen”, “utensils”, “solutions”.

Like, if you sell lemon zesters and call them YELLOW BOOM, don’t try to change the name to YELLOW BOOM LEMON ZESTERS or YELLOW BOOM UTENSILS to differentiate from GOLD BOOM for cucumber peelers. However, changing to YELLOW KABOOM may work just fine.

  1. Finally, if you want to sell pillows and linen called SLEEP AND MAGIC and there is a trademark for bed throw called SLEEPY MAGIC, it will not help if you misspell your trademark as SLEEP AND MAGIK but it may help if you change it to SNOOZE AND MAGIC or SHUT EYE MAGIC.

What to do if you are stuck and can’t come up with any unique words to add? Use Greek mythology. There are wealth of cool names you could add to your unregistrable trademark and make it registrable. To list some IRIS, ZEUS, KRATOS, ARES, HECUBA, NEMESIS.

Going to our example above, YELLOW BOOM may become registrable if you turn it into YELLOW SPHYNX or ARES BOOM.

Another tip to remember is that you also risk getting a cease and desist letter if you use a similar trademark. To avoid getting a cease and desist letter saying that you are infringing on somebody else’s registered mark, pick a unique name. If your trademark is too close to an existing trademark, stay away and pick another name.

The examples above were quite oversimplified. There are other factors that come into play when it comes to assessing confusion, for example: how many similar trademarks are already on the Trademark Register? If there are other similar trademarks, there may be co-existence. How long have you used your trademark? The longer you used it, the higher the chances that it will register.

We do provide suggestions how to make your name stronger when we do a free trademark search for you, so if your name turns out to be unregistrable, we will work with you to find a registrable name or tweak the existing name to increase your chances of achieving registration.

Brexit update: implications for EU trademark owners

Posted on by trademarkangel

Brexit update: implications for European trademark owners
You probably know that the UK will be leaving the European Union on March 29, 2019. This means that it is less than 7 months to the official UK exit after which a lot of things will change.

Until now, no one knows what the future of European trademark protection would be in the UK after the country officially leaves the EU. A ‘Preparedness Notice’ was issued in December 2017 by the EU Intellectual Property Office (EUIPO). In the notice, trademark holders were advised that if there is no agreement to the contrary by the March 30, 2019 deadline, all registered European trademarks will become invalid and ineffective in the UK.

The EU and the UK government are still negotiating, but the Draft Agreement on the pull out of the UK and Northern Ireland from the EU and the European Atomic Energy Community was published on March 19, 2018. The primary objective of the agreement is the post-transition period which is from 29 March 2019 to December 31, 2020. From the legal viewpoint outside the EU, the UK will de facto remain a member of the EU during this period.

The Draft Agreement states that trademark owners who their trademarks were registered before the transition period ends shall, without re-examination, be the holder of a comparable registered and enforceable intellectual property right in the UK as provided for by the UK law. This simply means that nothing should change during the transition period, compared to the current situation. Also, the trademarks that have been registered by the EUIPO should remain protected in the UK even after Brexit.

Nevertheless, it’s still unclear what would come out of the Brexit negotiations. Besides, it’s unknown how the European courts and EUIPO will handle marks filed before or during the transition period, as soon as the period expires.

So, to be on the safe side, you should protect your business or brand in advance by registering your trademarks in the UK and the EU. Remember that proving an unregistered right is much more difficult than relying on a registered right.

When you register your trademark in the UK, you will be protected from the inevitable chaos that may occur as a result of the final separation of the UK from the EU.

Can you trademark a color alone? Can you copyright a color?

Posted on by trademarkangel

Colors by themselves aren’t protected by copyright. An arrangement of colors, for example, in painting is protected by copyright, and such copyright belongs to the creator of the painting.

A single color may be protected as a trademark. In many countries such as the US, Canada, the UK, and EU, it is possible to register the color, while in others (usually in Asia, Africa, and the Middle East), you can’t, no matter how much you use it there. A single business may have the exclusive right to use a particular color on specific products or services in the course of trade.

Even where it is possible, it’s very difficult to register such color. A trademark color registration is difficult to register because there is a public interest in not monopolizing the availability of colors for use by other traders/businesses. However, if the owner can show that as a result of the long-standing and widespread use of the color on its products and services, customers’ perception of that color has changed, then it may be possible to trademark such color.

So if you wish to register the color, you will have to make your clients recognize your company the moment they see the color in association with your product/service. This may be very difficult to achieve (impossible in most cases).

Let’s throw some examples of color marks that everyone is familiar with:

Brown color AND courier services IS UPS.

Purple color AND chocolate IS Cadbury.

Robin’s-egg blue color AND jewelry IS Tiffany.

Green color AND machinery/tractors IS John Deere.

Orange color AND steel racking / home improvement IS Home Depot.

Red color AND retail department store IS Target.

It is worth noting that one does not trademark just color abstractly or in isolation from the products. It is always color AS applied to a specific product.

Let’s put this in the context.

UPS trademarked as chocolate brown color as applied to the entire surface of vehicles and uniforms.

Tiffany trademarked color robin’s-egg blue which is used on boxes. Of note: today the color is not only trademarked (it has been since 1998), but it also has its own custom Pantone number: 1837, the year the company was founded.

3M trademark canary yellow color as applied to POST-IT notes.

Home Depot trademarked color orange in various variations: as applied on steel racking, employees’ aprons and logo.

If you have trademarked a color, it means that nobody else will be able to register it on the same products.

Your products or services must be associated with the color by most of the consumers. The color must have acquired “secondary meaning” – signifying that consumers immediately associate this particular color with this particular company.

This is really difficult to do and expensive (since you will have to prove that the customers’ link the color of your products).

Should you worry about protecting your color? Probably not. Most business owners will be just fine by protecting their brand name, their logo and their slogan (tagline).

What is a Statement of Use in a trademark application?

Posted on by trademarkangel

What is a Statement of Use in a trademark application?

If you’re a first-time trademark applicant (or a third-time trademark applicant!) and a Statement of Use (SOU) is being required of you, you might be scratching your head. What exactly is expected?

To know what a SOU is, you’ll first need to know what constitutes an Intent to Use (ITU) trademark application.

An ITU application is filed when a trademark applicant (like yourself) wants to register a trademark that is not currently being used in public commerce in the US. Think of it as claiming dibs on something; you’re not currently utilizing the trademark, but you plan to soon!

Typically, if your ITU application is successfully filed and allowed, you’re given a Notice of Allowance from the US Patent and Trademark Office. This means that you’ve been allowed temporary ownership of the trademark in question over a period of time typically lasting six months (but extendable to 3 years). So, at some point before the six months is over, you’re expected to follow up with the USPTO by filing a Statement of Use or asking for an extension of time to file a Statement of Use. This is you saying, “Look, I am now actually using the trademark that I filed for under the ITU basis!” If you don’t file a Statement of Use within this time frame or extend the deadline, then your trademark application will be abandoned.

What exactly do I need to show when I file a Statement of Use?

How you indicate that you’re using your trademark is up to you, but the most common options to present (with products) are labels, packaging, tags, or even instruction manuals with the trademark visible on the products themselves or their packaging. If your trademark is associated with a service, then things like brochures, public websites, or published advertisements work just as well (with the trademark visible). When you file a Statement of Use, you also need to indicate the date that your trademark was first used in public commerce, as well as confirm that the mark has been used on all the goods/services that you listed in the application (or, you can note that you don’t intend to use the trademark in one or more ways if you’ve changed your mind since filing; in which case products or services not in use can be deleted).

In short, you’re showing to the USPTO that your trademark is being used publicly in the United States and in inter state commerce (meaning you sell to another state than where you are located) or if you are located abroad – you are shipping to the US/selling in the US, and in keeping with typical trademark usage concerning the class of your goods or services. This also means that trademarks used sparingly or merely between private parties (like friends or relatives) often do not meet the necessary metrics for an SOU to be accepted. Again, the trademark must be used consistently, legitimately, and in the normal course of trade for your Statement of Use to be accepted.

What if I need more than six months after filing an ITU?

That’s okay! The USPTO allows for a Request for an Extension of Time if your proposed trademark is not currently in use. In fact, you can do this up to five times in a row before an SOU is officially required.

*An important distinction: Technically speaking, a SOU can be filed only once the USPTO issues a Notice of Allowance, and this response time varies. However, if you’re ready to file a Statement of Use (meaning you can prove your trademark’s use in commerce) before the USPTO responds, you’ll actually file for an Amendment to Allege Use instead of a Statement of use. In short, it’s turning your initial ITU application into an in-use application, but for your purposes it amounts to the same thing.

Note in both cases (Filing a Statement of Use and asking for an Extension of Time), you will have to pay additional government fees per class (from 2025, the fee to submit a Statement of Use is US$150 per class and the fee to obtain a 6-month Extension of Time is US$125 per class).

Once your SOU is filed and accepted by the USPTO, registration has officially been a success! Congratulations!

Any questions about this process? Are you considering filing an application based on intent to use and want to walk through the above steps with an expert? Are you currently waiting for the USPTO to respond so that you can file a SOU? No problem! The team at Trademark Angel is happy to assist with any aspect of your trademark application. Contact us now with no obligations!

Check a more in depth article about Specimens of use here and an article talking about specimens of use for clothing (class 25) and retail store (class 35) here.

Thanks,

The Trademark Angel Team

Updated: Dec 30, 2024