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A Primer on Trademark Registrations

June 16, 2009

Curious about the (TM) and (R) symbols by brand names? Interested in whether your company needs a trademark? I hope to here clarify for you what a trademark is, how to register one, and how to get your trademark registered internationally!

Disclaimers: I am not a licensed attorney and cannot provide you with legal counsel or advice. Consequently, there may be very serious errors in this writeup. You are strongly advised to consult with proper legal counsel before taking any action in filing or not filing a trademark. I am not responsible for you screwing up your trademark registration!

A “trade mark” is a unique piece of text or graphic that uniquely identifies your brand. Think of the Apple logo or the Nike swoosh, the blue stripes of the IBM logo or the bland text of “Microsoft”. All of these are trademarks. I’m not allowed to sell a piece of software and call it “Microsoft” or even “Micro Sawft” or anything that’s confusingly similar. Having it be clear to consumers what companies are making what products they buy is helpful to both consumers and the owners of trade marks.

Most marks are registered around certain “classes” of product or service. This allows two companies both named “Kara’s” to co-exist, where one is a gourmet cupcake outlet and the other is a home cleaning service. The point of having “classes” of products or services is that the purchaser of Kara’s cupcakes isn’t likely to believe that it’s affiliated with the home cleaning service. There’s a low risk of confusion so they could both own the trademark “Kara’s” in their respective classes.

In many countries, like the US, you get a trademark by default, just by virtue of using a particular name in commerce. Just registering a website and operating it is good enough. If you want to let the world know that you think you own a particular trademark, you can put “(TM)” next to the mark. This doesn’t require or grant you any particular legal rights, but does make an implicit statement that you are planned to sue people who infringe your mark. The burden of proof will fall on you, however, that you were the one to first use the mark. But in other countries, like Mexico and South Korea, there are “first to file” regimes — so even if you’ve been using a mark in commerce for years, if you haven’t filed with their patent office a brand new competitor could beat you to the punch and legally register your trademark. If you’re planning on doing business in one of these countries, it would be wise to file sooner rather than later.

If you’d like stronger protection for your mark, you can choose to register it with the US Patent & Trademark Office. This will cost you $350 per class. If you have a website, you probably want both the Product Class 9 and Service Class 39, for a total cost of $700. Not bad for lifetime rights to a mark. It will take about six months for your case to get assigned an examiner at the USPTO (it used to take over a year!) – the examiner might call, mail, or email you if they have questions about your mark. For instance, when I registered PBwiki, I had to explain to the examiner that I was not claiming ownership over “wiki”. Once you’ve cleared the examiner, the notice that you’d like to register the mark will be published in the Federal Register in order to let people who object to your registration see your intent and respond to it — for example, if you tried to register “Zeerocks” as a mark for a photocopier company, Xerox could object to the registration after your mark was published for opposition. If there has been no opposition, you should recieve your registration about three months after your mark has been published for opposition. At this point you can use the ® symbol next to your mark to indicate it’s a registered trademark. If someone violates your registered trademark, the burden of proof is now on them that they are not in violation — and if they’re found guilty, they are responsible for treble (3x) damages due to “wilful infringement” (namely: they should have known better since the could have seen the mark was already taken!).

If you’d like a template for how to do this, check out the PBworks trademark registration and note how the class 9 description focuses on the software as a thing and the class 39 description focuses on what it is doing to provide a service. You’ll need to phrase your filing in this way.

If you’d like to register your mark in other countries as your brand starts going global, there are two main ways. You can either do it yourself directly with each country’s government offices or you can use The Madrid Protocol – this mechanism allows you to submit one registration to several countries at the same time through the United Nations. Be warned, costs can add up in a real hurry – if you want to register your mark in two classes in all 42 jurisdictional areas, it’ll run you around $20,000. On the plus side, you’ve got a single entity to deal with (WIPO – the World Intellectual Property Organization, an arm of the U.N.) and don’t have to scurry around making lots of different filings with lots of different patent offices. On the downside, unless you’re a giant multinational corporation, you probably don’t have to worry about registering your mark in Lesotho. And you still can’t use this system to register marks in countries not under the protocol, like Brazil or New Zealand.

WIPO charges a pretty hefty overhead for the service – $653 + about double the rate that you’d pay to any single country’s trademark office. For instance, if you want to register an EU trademark directly, that’ll set you back 900 Euros (~$1200) but if you file through WIPO via the Madrid Protocol, it’s 2229 CHF (~$2000) to get coverage in the EU. So you’re definitely paying for the convenience of filing in one place.

Here’s a quick guide I’ve just assembled for the costs of registering trademarks in different countries and links to the online (English) applications:

I found websites for the following Patent Offices, but there wasn’t a clear link to online registrations – I’ll update this post at the point that I find those links!

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