Trademarks
Trademarks are keystones of any prospective IP portfolio: their individualizing capacity makes a company stand out on the market and adds up to the value of the business assets. A trademark is also the heart of each brand - the voice of any business used to communicate values, ideas and company’s unique image, be it a start-up, individual entrepreneur or a global corporation.
A wide range of company’s identifiers can become trademarks: a word, image, logo, 3D mark, smell, colour, position mark, hologram, music tracks, short video – the list goes on, allowing businesses to protect their identity and enhance its value. A registered trademark is a weapon against infringement, unfair competition, counterfeit and dilution. Furthermore, a trademark is an indispensable part of a franchise agreement, which is one of the leading tools in modern economics.
- The name and address of the applicant
- A list of the goods and/or services for which the trademark is intended to be used
- A representation of the trademark (for figurative marks)
- A Power of Attorney (which does not require legalization)
- Certified copy of priority application(s) (if priority is claimed)
Trademark searches
A trademark search prior to filing mitigates risks associated with possible obstacles awaiting a candidate mark along the examination path at the Patent and Trademark Office. Post-registration searches are also crucial: constant monitoring of new filings makes it possible to timely act against pending and registered trademarks by means of third-party observations and oppositions.
Both pre-filing and post-registration searches are important steps along any trademark timeline. Thorough trademark searches form part of broader freedom-to-operate researches preceding launch of products on the local market, while simple surveillance has proven effective against trademark dilution, bad faith registrations and confusion on the market.
Xandra Law conducts identical and similarity searches with legal opinions, as well as searches by a company’s name and monitoring with advice on further proceedings against pending or registered trademarks.
Provisional refusals
The Madrid system is by far the most popular way to extend trademark protection to several jurisdictions at once. When an international registration faces a provisional refusal by a national Office, the applicant should hire a local trademark attorney, and PATENTICA is happy to offer our professional advice and service to ensure grant of protection.
When undergoing examination in designated countries by the national Patent and Trademark Offices, pending international trademarks can be rejected on various absolute and relative grounds, such as similarity to prior trademarks, misleading nature, vague terms in the lists of claimed goods/services, lack of distinctive capacity and other grounds for refusal stipulated by the legislation.
At PATENTICA we analyze refusals, assess chances and offer balanced strategies for responding to the refusal in a way ensuring the shortest path to the decision to grant of protection in the country of the applicant’s interest.
If the term to handle a provisional refusal has already expired or in case the response has not been effective, it is not the reason to give up: final refusals can usually be further appealed, and PATENTICA will be here to help.
Trademark oppositions
The legislation systems offer various procedures for acting against both pending and registered trademarks, grant of protection to which would violate legal requirements. Pending applications can be contested via oppositions or third-party observations, depending on the jurisdiction, in order to prevent them from maturing into trademark registrations. At the same time, registered trademarks usually can be invalidated through oppositions filed against them on one of several bases stipulated by law from similarity with prior trademarks to unfair registrations.
While publishing trademark applications for oppositions by third parties is a common feature of IP legislation adopted by many countries, some jurisdiction do not allot specific time for opposing pending applications. However, even then any interested party conducting proper monitoring can usually file third-party observations against pending applications before their examination is completed. The observations may be based on similarity to prior trademarks, copyright, company name or industrial design, misleading nature of the filed mark, lack of its distinctive capacity and other grounds.
After registration, an opposition can be filed to contest already registered marks on the same grounds as pending applications. In addition, trademarks registered in the name of agents (distributors, local branches etc.) and unfairly registered trademarks can be attacked. The deadlines vary depending on the jurisdiction and the basis for opposition.
PATENTICA handles third party observations and oppositions in any form, provides a deep analysis and risk assessment before acting against trademarks potentially dangerous for client’s business, and offers alternatives, where applicable, such as forwarding limitation requests, CDLs and reaching co-existence agreements.