Sometimes we think we know it all. Many times this is not true. At least occasionally we need to get back to the basics and reboot. I thought I would share one such occasion with you and answer some common questions.
1. A trademark – what is it?
A trademark shall consist of a graphically representable sign that can serve to distinguish the origin of a product or service. The latter is the essential function of a trademark – to exclusively identify the commercial source or origin of products or services. Sometimes you can get trademark protection just by using a mark, so called acquired rights, but registration adds clarity and security for investments. Trademark registries are maintained by many national or regional trademark offices, such as the Swedish PRV, the EU OHIM and the US USPTO. The trademark owner can be an individual, a business organization, or any other legal entity.
Different goods and services have been classified by the International (Nice) Classification of Goods and Services into 45 so-called Trademark Classes (1 to 34 cover goods, and 35 to 45 services). The idea behind this system is to specify and limit the extension of the intellectual property right by determining what goods or services are covered by the mark, and to unify classification systems around the world.
A trademark thus has to be registered for the specific goods and/or services, for which it is or will eventually be used. A defensive barrier or similar goods and services are also often included to prevent other registrations from coming too close. Trademark protection for products and/or services for which the trademark is not used ultimately becomes subject to revocation, but that is another story. Moreover, a trademark must be able to distinguish your products within a particular category from those of others. This means that the mark cannot just describe the product or type of product (like CAMERA for a camera) or a generic claimed quality of any product (like HIGH QUALITY). As initially pointed out, a trademark must be graphically representable. Typically this is manifested by product/service names (brands) and taglines (the main category would be word marks, such as Coca-Cola® or Just Do It® - the former property of The Coca-Cola Company and the latter owned by Nike®). The other main category would be logos and other graphic elements (this category is often referred to as figurative marks, such as the Nike “Swoosh” symbol), but that is not all. For example, musical tunes have been registered by registering the sheet music, and even smells have been registered in the form of a verbal description of the smell.
2. What’s the difference between a trademark, a copyright and a patent?
A trademark is legal protection for your brand, intended to ensure that competitors do not market similar products under a similar name, with a similar logo, in the same kind of packaging, etc. Copyright protects a literary or artistic work manifested concretely, examples comprising a book, a drawing or painting, a computer program, photographs etc. Protection is afforded against actions such as unauthorized copying, public displays or exhibitions. A patent protects a new and inventive industrially usable technical achievement (an invention) against unauthorized
commercial use by others.
A patent requires registration and can be expensive since there is a rather complicated prosecution process leading up to a grant, whereas copyright protection is automatic as long as the work is original enough to be awarded protection. It could be said that trademarks are somewhere between patents and copyrights. As stated above, trademark protection can be obtained through use without registration, but a registered trademark is safer than relying on such acquired rights and typically not nearly as costly as a patent. Both trademarks and patents (as well as designs and some other intellectual property rights collectively known as industrial property rights) are territorially restricted rights (only valid in specific jurisdictions), whereas a copyright is automatically recognized worldwide (almost).
As far as the duration of protection is concerned, a patent is granted for up to 15 years (20-something years in the pharmaceutical business, where various extensions are possible). A patent must be renewed annually against a fee. The renewal fees increase substantially toward the end of the validity term. A copyright is typically valid throughout the “author’s” lifetime plus an additional 50 - 70 years (national differences exist). A trademark registration must typically be renewed every 10 years, but as long as the trademark is still used in commerce, the registration can be renewed in perpetuity.
3. Isn’t it enough that my company name is protected?
Yes and no. A registered trade name (Sw. firma) receives some of the protections granted a registered trademark, but the protection is weaker and narrower. A registered trade name basically only protects you against bad-faith use of your “mark” by others. In most jurisdictions, if someone else files an application to register your trade name as a trademark before you do, you must respond and file your opposition against the application within a specific timeframe. In Sweden, if there is a confusing similarity between the trade name and the applied trademark, registration of the trademark will not be allowed, but in many jurisdictions such opposition will usually only succeed wholly if you can document that the applicant knew about your trade name before they started using it – so-called bad faith. The scope of protection granted a Swedish trade name is further limited by the registered business activity (Sw. verksamhetsbeskrivning).
4.Trademark cover – for what should I seek protection?
Your trademark should cover classes that include the core activities of your business. At the risk of sounding somewhat unprofessional – one easy solution is to review your competitors’ trademark registrations to see what products they have included and see if that makes sense. Regardless, prepare to describe your business, present and future, for your trademark counsel and ask him/her. It is important to note that different trademark registries have different policies regarding the list of goods and services. In the US, you have to document actual commercial use of the mark for the products in question, whereas in Europe in general and Sweden in particular, you do not (but as stated above - non-use can lead to revocation).
5. Where should I register my trademark?
Unlike copyright, which is (almost) automatically awarded protection worldwide, trademarks are territorially limited exclusive rights. This means that you must register your trademark at the trademark offices/registries in all jurisdictions where you plan to use your trademark and want to protect it through registration. For example, registration in Sweden, will provide some provisional protection or priority for your application in other jurisdictions, which must be filed within a certain time. You do need to act promptly if you discover that your first application has inspired someone else to use or register your mark. Filing in the main market first provides a good indication and initial reaction from the trademark office in question, which may be helpful when considering a decision on investing further in the applied-for trademark. If you want to file an application in several countries right from the start, international registration through WIPO is a convenient option, but eventually you will have to deal with the individual trademark offices, each of which processes the application and any related obstacles separately.
6. Can I do it myself or do I need a trademark counsel?
It is indeed possible to file a trademark application without counsel. The application per se is not rocket science. The considerations on how to complete the application and effectively formulate its details and scope, however, is a different matter. It is generally advisable to retain some kind of professional assistance to help you with clearing the mark, drafting and filing the application (especially the list of goods and services), communication with the trademark office after filing in case your application must be amended to proceed to a grant, and definitely advisable if you face opposition or other proceedings that may arise.
7. What about costs?
Costs for a trademark application can roughly be divided into three categories: 1. Official application fees charged by the relevant trademark office typically range from SEK 2,000 to 3,000 per jurisdiction. For an EU-wide CTM application, the official fee is in the range of SEK 9,500. Additional classes of products added to your application will increase the official fees. Before you get this far, however, you would usually, or in my opinion should, engage trademark counsel to help you clear the mark and prepare the trademark application, which, including search costs, will add at least a couple of thousand SEK. Although no guarantee for smooth sailing, this is well-invested money; navigating an application through opposition and/ or other litigation will multiply the costs several fold.
8. I have already registered my trademark, now what?
Good for you! However, don’t get too comfortable yet. You should be aware of the following:
Use your mark. If you don’t, it can be revoked.
Remember to renew your mark. If you have retained trademark counsel, they will help you to do this. A trademark registration will typically expire after a period of ten years, but can be renewed as many times as you want, provided you (often through your trademark counsel, pay the renewal fees.
Monitor your trademark for infringement and third party use of similar marks. In most jurisdictions, if someone applies for registration of an identical or similar mark for similar products, you must file an opposition within a certain timeframe after the new application has been published. Again, if you have retained a trademark attorney, they will or at least can help you to do this. Monitoring services come at a cost of SEK 3,000 – SEK 10,000 annually per mark, depending on the geographical scope and number of classes monitored. If someone is using a mark similar to yours in a commercial context, you should promptly react with a cease-and-desist letter. In such cases you have definitely crossed a line – retain a trademark counsel to help you. Failure to file opposition or demand cease-and-desist can constitute acceptance and make it virtually impossible, or at least substantially more costly, to successfully take any legal measures later on. If you are considering a “live and let live” attitude toward a similar trademark application or use, please note that this will weaken your brand and may cause confusion in the marketplace.
9. The trademark symbols - ®, ™, a/c
® is the symbol for registered trademarks; use this only if and when you have obtained registration for your trademark. In some jurisdictions, such as the UK, use of the ® symbol without an actual registration is specifically illegal, while in other jurisdictions doing so may be considered to be misleading advertising. The ® symbol is often also used to acknowledge the existence of thirdparty trademark rights, whether in marketing materials or reference works, such as this article. ™ is a symbol used for (unregistered) trademarks where you want to mark your turf – it simply sends the signal that you consider this to be a trademark and that “This trademark is mine and I will defend it.” The seldom-used a/c symbol (really only in the US) is for service marks (unregistered) and otherwise the same as ™.
10. I have seen that trademarks are often written in CAPITALIZED letters, why?
Tradition, mostly. It has no legal significance. Using capitalized letters or inserting a space in parts of the mark can, however, change how the mark is perceived. For example, MORETIME is not quite the same as more time, Moretime, or MoreTIME. Again, this has no immediate legal significance and is quite rare.
11. What is the correct term – trademark, trade mark or trade-mark?
There is no right or wrong here. The use depends on the jurisdiction. “Trademark” as one word is commonly used in the US, among others. “Trade mark” in two words is (declining however in my mind) more common in the EU, among others. Do not use the hyphenated version, unless you are in Canada.