Trademarks are one of the most valuable assets of a business. Think Coca-Cola, PayPal and iPad, and you immediately think of a company, product, brand, experience, reputation, solution and public goodwill. Here we discuss what a trademark is, how to select a trademark, how to establish rights to a trademark and where to turn for additional help. Note: I am not an attorney. The information provided below is based on experience and extensive research and should not be construed as official legal advice. Before proceeding with a name, symbol or word on a local or global basis, consult with an international intellectual property (IP) attorney.
What is a trademark?
A trademark is any word, symbol, name or device that explains or differentiates the source of the service or goods of one party from those of others.
A trademark or service mark can be a slogan (e.g., ours: "We Make Going Global Easy®", as shown), logo, word, stylized package design or any other distinctive element that serves to indicate an original source, service or good.
For example, Kleenex is a word mark for tissues, the Diet Pepsi design is a logo for a soft drink, and "We Make Going Global Easy®" is a slogan for international traders.
Under certain circumstances, sounds, color combinations, smells and shapes can be trademarked.
How to select a trademark
Got a word? Think it's catchy and descriptive? Well, rethink the descriptive part because terms that are merely descriptive of products and services can be complicated to protect as marks. The more descriptive, the more difficult it can be to stop competitors from using it.
Before using a new mark, conduct a search and consult with an international trademark attorney. You don't want to get started with a big marketing campaign that requires a sizable upfront investment only to find out later that there is a conflict with the mark you are about to use.
Your search should be done based on how and where you intend to use the good or service.
How to establish rights to a trademark
Trademarks are established either through registration or use. In some countries, using a mark can establish common law rights to the mark (be sure to check). In many countries, the first registrant of a mark acquires exclusive rights.
Caution: Beware of others registering a trademark for your product or service in a foreign market. For example, let's say you are about to export a product that you have obtained a trademark for in the United States but nowhere else in the world. You appoint a distributor of the product in Indonesia. He/she, unbeknownst to you, applies for a trademark for your product in their country. Guess what? You've got a problem. Now you must negotiate to obtain a license, pay a royalty on sales to the foreign distributor or buy back the intellectual property rights that have been registered there.
And by the way, it works both ways. You could apply for a trademark for the Indonesia firm's product in the United States provided they have not already done so.
You register a trademark through the national trademark office in the country or region where you wish to protect the mark. In the United States, for example, you'd register with The United States Patent and Trademark Office (an agency of the Department of Commerce: http://www.uspto.gov/). You can conduct searches, file online for an application and even watch a "how-to" video on trademarks.
After a trademark application is filed, an examiner in the trademark office examines it and may raise questions about it. Once the examiner is satisfied that the trademark meets all necessary requirements for registration, the trademark application is published by the trademark office.
Trademarks last forever provided you renew the registration periodically. You can lose your rights to a trademark if you stop using it with no intention of using it again, which is known as "abandonment."
How much does a trademark cost?
For a schedule of current fees (they vary widely based on trademark application, trademark search, trademark international application, etc.) from The United States Patent and Trademark Office, visit: http://www.uspto.gov/web/offices/ac/qs/ope/fee092611.htm
Is a trademark application valid globally?
The simple short answer is no. The trademark is limited to the country in which you obtain the trademark, so you will have to file individual trademark applications in each country where protection is sought. There are exceptions to the rule whereby you can apply for a single trademark covering multiple countries, but you need to be knowledgeable about the process and the particular provisions, so consulting with an international IP attorney is prudent.
Two key places to turn for additional trademark guidance
Based in New York City, the International Trademark Association (INTA: http://www.inta.org) is a not-for-profit membership association that claims to be a one-stop resource for worldwide trademark law. With offices in Shanghai, Brussels and Washington, DC, and representatives in Geneva and Mumbai, INTA is dedicated to the support and advancement of trademarks and related intellectual property as elements of fair and effective commerce.
Founded in 1878, INTA spotted a need for an organization "to protect and promote the rights of trademark owners, to secure useful legislation and to give aid and encouragement to all efforts for the advancement and observance of trademark rights."
INTA is a valuable network of powerful global brands. Members of INTA find value in the association's global trademark research, policy development, and education and training.
The World Intellectual Property Organization (WIPO), http://www.wipo.int, is the United Nations agency dedicated to the use of intellectual property as a means of stimulating innovation and creativity.
This article should not serve as a panacea on global trademarks, but it's a start. There are other terms, conditions and processes you should know about before adopting a mark. More importantly, like with any new endeavor, do your homework. Then consult with an international trademark attorney.