Trademarks are used to create a distinction between different brands to enable the customers to be able to identify brands, but if some brands would look similar, whether they function similarly or not, then it would be a great confusion for the customers. So, law has made provisions to punish those who would infringe the rights of a person who holds the registration of a trademark and by also settling some grounds what a person has to follow before he can get his wanted trademark registered because they would try to use the name of brand who is already famous and well established in the community and no other person should be able to benefit themselves using the goodwill of someone else without their permission. Scroll down to check more about Trademark Registration in the USA.
Benefits of Trademark Registration in the USA
The following are the benefits of Trademark Registration in the USA:
- It provides legal protection.
- It provides a recognition among the targeted market.
- It ensures a trust among the customers for the brand.
- It acts as a guard from fraud and deceit.
- It facilitates a recognition and establishes goodwill across the globe.
What Cannot Be A Trademark?
Even though law provides a wide range of protection under trademark for e.g. even scent, touch, motion, flavour and sound can be protected, but it’s not like everything can be put under the trademark protection, In order to attain trademark protection, some requirements has to be fulfilled, such as:
- Trademarks which are deceptively similar.
- Trademark which represents a community, religion, or caste.
- Trademark which is immoral.
- Trademark which causes confusion in the audience’s mind.
- Trademark which is a commonly used name, symbol etc.
- Trademark which directly represents the product or the services.
Documents Required for Trademark Registration in the USA
Following is the list of documents required for Trademark Registration in the USA:
- The applicant’s name and address proof.
- Details of the goods or services of the applicant.
- The details of the mark, in case of a traditional mark the applicant will have to submit images of the trademark from every angle, if it is a non-conventional trademark like sound, then the composition with the symbols and the sound recording, similarly in case of taste or scent, the recipes or combination of things used to create the scent or the taste.
- A prescribed fee for filling and submitting the application.
- Applicant’ citizenship proof.
- An attorney, a legal representative of the applicant and a person who has all the knowledge about the trademark will have to verify and be present with the applicant.
Filling of an Application for Trademark Registration in the USA
Following is the process to file an application for Trademark Registration in the USA:
- An applicant who intends to use the trademark in the US will have to file an intent to use application under section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b)) at the USPTO or through online form. The applicant will have to show that he intends to use the trademark in the US only then the mark will be registered.
- If an applicant is already an existing user of the trademark even before the filling of the application for Trademark Registration in the USA at the office, then for the motive to have his trademark now registered and wanting to have the protection under trademark, the applicant will have to file a use based application under Section 1(a) of the Lanham Act, codified at 15 U.S.C. § 1051(a)).
- Section 44 of the Lanham Act, 15 U.S.C. § 1126, provides that if an applicant who has been using a trademark in a country other than the US, or has currently applied for trademark at the country of the trademark’s origin, then this section enables a foreign applicant to file for trademark registration in the US.
- An applicant can also directly file an application for Trademark Registration in the USA under World intellectual property organization commonly known as WIPO, provides for extended protection of trademark as provided under Section 66 of the Lanham Act, 15 U.S.C. § 1141f.
Process after Filling of the Application for Trademark Registration in the USA
Following is the process after filling an application for Trademark Registration in the USA:
- The USPTO has the authority to issue trademark in the US. After filling for the application either online or offline the applicant can check the status of the application on the USPTO website and a serial no. is assigned to each application, the details of application and the serial no. will appear on the website. After that within 3-4 months the applications status will be decided, i.e., if it is approved or not. If the registrar is not satisfied with the trademark due to reasons like deception, fraud or otherwise, then action will be taken. The applicant will be given six months to represent himself.
- After the hearing is completed, if the registrar is satisfied then the trademark application will be issued and published in the official gazette. If any person has some kind of discrepancies, then he has to file for such within one month from the date of the publication of the trademark. The process usually takes 9-12 months to successfully complete the registration process if no objections have been raised against the application.
- After expiry of 1 month, if no opposition has been raised then, the certificate will be issued, in case of intent to use application, the applicant will have to submit the proof of use within 36 months from the date of issuance of the certificate only after that the registration will be successfully completed.
SM Dyechem Ltd. vs Cadbury ltd
- The plaintiff had a trademark of the word “piknik” for his company which dealt in edible products like chips, wafers, popcorn etc. the respondent used the mark as “Cadbury’s picnic” for his brand in producing chocolates. So, the suit was filed for injunction against the respondent against stoppage for using the mark picnic which was alleged to be similar and creating confusion.
- The respondent claimed that its brand mark is registered in 110 countries and is well known across the globe since 1999. And picnic is a dictionary word which cannot be claimed over monopoly.
- The court held that the words are not deceptively similar as both are visually different and the composition of words are also different.
Bigtree Entertainment vs. Brain Seed Sportainment
- The plaintiff used the mark called “bookmyshow” since a considerable period of time whereas the defendant used a domain name called bookmysports.com. both the plaintiff and the defendant had the domain names with the prefix bookmy which was alleged by the plaintiff to be deceptively similar with his domain name.
- The court held that book my is a common prefix and that the plaintiff failed to show that his domain name has attained that much amount of fame and that it has not attained distinctiveness enough to grant injunction to the defendant.
Trademark registration has been exceedingly popular throughout the world and is expanding each day. The users are growing due to its benefits and long usage. However, there could still exists infringement of trademark, but that infringement can cause a huge amount of loss to the violator.
Marvel and DC comics have a trademark over the word “Superhero”, they use the word widely fearlessly and this is also due to nobody challenging the trademark on the word superhero. So, it also depends from country to country as what is considered as trademark. In Europe, The word Doublemint was not granted trademark due to unimaginativeness’ in the case of Wrigley’s Doublemint. So, it all depends on the laws and the judiciary of the country as what is to be perceived as a true trademark and what not.