Trademarks Across Borders: How do Canadian and US TM Procedures Differ?

Canadian and US trade-mark procedures have much in common, but there are also many differences. For this reason, it is important to have trade-mark professionals on both sides of the border to assist you in navigating each country’s laws. This post will highlight a few of the key differences between US and Canadian TM prosecution.

Fewer Fees!

Canada, unlike most jurisdictions, does not require that the wares and services be divided into classes, with fees payable for each. Only one application fee is payable, no matter how lengthy or diverse the listing of wares and services.

More Fees?

Unlike the US, the Canadian TM Office requires payment of a CDN $200 registration fee at the end of the process.

Classes

Speaking of classes, don`t expect that the Canadian Intellectual Property Office will accept the list of wares and services in a US registration. The Canadian Trade-marks Office demands a relatively high standard of specificity. Examiners will reject terms such as ”appliances”, “apparatus” or “equipment” as too vague, notwithstanding any additional descriptions, and is exceedingly picky about “software”, among other things. Nor should you expect to claim general categories of foodstuffs. “Juices” or “dips”, are likely to be met with a request that you specify what kind. Don`t even think about using the word “including”. In short, be prepared to amend your wares and services listing.

One Register Undivided

In Canada, there is only one TM register and it is national in scope. There are no provincial registers nor is there any “Supplemental Register”.

One Application, Also Undivided

In the US, an applicant may split an existing application based on grounds. For instance, if the original application includes elements of both “prior use” and ”intended use”, the applicant may “split off” a separate application from the original covering the “prior use” wares and services. In Canada, that is not possible. An applicant may delete wares and services, but may not “split them off” except by filing a whole new application.

Grounds for Application

In both countries, trade-mark applications may be based on (i) use of the mark in commerce (ii) proposed or intended use of the mark in commerce, or (iii) registration in a foreign jurisdiction (albeit in Canada, this ground also requires actual use in the foreign country). In Canada, a trade-mark application may also be based on the marks having been “made known” in Canada, i.e. that the fame of a mark in the foreign jurisdiction extends across the border into Canada.

Opposition Period: Double Time

In Canada, applications may be opposed for up to 2 months after advertisement in the Canadian TM Journal, whereas the opposition period in the US is 30 days after publication.

No Evidence Necessary

In Canada, TM applicants are not required to file specimens in order to secure a TM registration, nor is there any automatic requirement to file evidence of use in order to maintain the registration. In the US, a trade-mark owner must file an affidavit of use between 5 and 6 years after registration, and at the 10-year anniversary. In Canada, the only time evidence of use is required is in the event of a third party launching a cancellation proceeding.

The Colder the Climate, the Longer the Term

In Canada, a trade-mark registration lasts for 15 years and may be renewed for 15 year periods. In the US, registrations last only 10 years.

Parting Thoughts

If you are considering registering trade-marks in both the United States and Canada, be aware that each country has unique elements to its trade-mark registration procedure: what may fly in one country may be grounded in another. At Symbus, you have the benefit of experienced counsel in both countries to help you navigate the divide.

A Tour of Duty: Symbus Provides In-House Secondment Trademark Attorney Services

I am pleased to announce the new Symbus “secondment” services. If your trademark team needs an attorney on location to assist with a special long term project or to provide coverage for an employee on family leave, consider contacting me at Symbus Law Group.

U.S. attorneys are often unaware of the concept of secondment attorneys although they are widely used in the U.K. and Europe. The term secondment derives from the days when the British army officers were given temporary assignments outside their regular regiment. The practice benefited the new regiment that received an additional set of hands and a fresh perspective from an experienced officer. In the legal world, this practice means that an experienced attorney from a law firm that offers “secondment” services can be placed in-house on a temporary basis. The attorney can then assist with complex projects and provide client support “in the trenches” and often do so with minimal supervision and training on the part of the hiring manager. When the project is completed the “secondment” attorney returns to her law firm work with a greater understanding of the company’s business and legal needs and can now work more effectively and efficiently with the company on a traditional basis.

Companies requiring special coverage for any of the following situations often use secondment services:

• An attorney on maternity or sick leave
• Long term projects, such as global trademark recordal assignments or name changes
• Global search and filing of a new brand
• A legal department that wants to bring their trademark portfolio in-house but does not need full-time trademark counsel
• Assistance with setting up in-house trademark operations
• Switching to a new trademark management database

How does hiring a secondment attorney differ from hiring a temporary attorney from an agency or borrowing an associate from a law firm? For projects requiring specialized skills and knowledge, such as for intellectual property matters, temporary attorneys from agencies rarely come with the necessary experience to “hit the ground running”. The hiring manager must often train and closely supervise the attorney. Once the project ends, even if the attorney has been of great assistance, the nature of temporary work is that the temporary attorney is unlikely to be available the next time the hiring manager needs an attorney since such attorneys are often on other projects or have taken permanent positions. For these reasons, the time spent training and supervising the temporary attorney usually does not provide a long-term benefit. Likewise, borrowing an associate from a law firm can be an inadequate solution since traditional law firms often insist on billing the attorney at an hourly rate and often will only provide an associate with one or two years of experience. The hiring manager is left to provide training and supervision. To make matters worse, particularly for specialized intellectual property work, even the less experienced associates at traditional firms are often billed at hundreds of dollars an hour. For these reasons, hiring a secondment attorney is often the preferred solution for addressing temporary in-house legal assistance needs.

Symbus Law Group now offers secondment services to companies seeking trademark attorneys to work on a temporary (long term or short term) basis in their offices or ours. Secondment services can be on a 1-5 days/week basis for anywhere from 1 week to 6 months. Call me and we can discuss a cost-effective strategy for addressing your needs, either on an hourly basis or at a flat rate. Symbus trademark attorneys are available to work at in-house locations in the greater Philadelphia, Washington, D.C., Northern Virginia, and Ventura county, California areas. For more information, contact me, Teresa Anzalone, at 610-420-7731, or by email at tanzalone@symbus.com.

Key Elements of a Patent Program for Small Companies

There are many reasons why even small companies should consider implementing a program under which key inventions can be identified and protected through the filing of a patent application in the United States and/or in selected countries outside of the US.  For example, for patent applications that mature into issued patents, proprietary processes, systems and designs developed by the company can be protected by securing the right for the company to exclude any third parties from practicing those developments in the applicable geographic jurisdictions.  Also, these patents can be used as the basis for obtaining royalty income for the company through strategic licensing of the patented inventions.  Yet another major advantage of holding patents is the incremental value that they bring to the overall valuation of the company.

For companies that have or expect to have at least a reasonable number of valuable technological developments made over time, a patent program may provide a very strong cost vs. benefit result.  For a relatively small investment of time, resources and money, it is often possible to sigfinicantly increase the valuation of the company as well as its perceived technical position in its industry not to mention the potential monetization opportunites available with respect to issued patents.  The inventions considered under the program for filing may derive from employees of the company, contractors under an obligation to assign inventions to the company or from third parties in connection with arrangements such as joint development where the company is entitled to own some or all of the potentially patentable inventions.

Once a company decides that it wishes to implement such a program, there are a number of key elements that should be considered and implemented in connection with program roll-out.  As a starting point, it is very helpful to document these and other elements of the program via a policy statement which is available for access by employees and management.  The presence of such a document makes it clear to all how the program works and what the relevant expectations should be.

One element which may be included in a patent program (but which is not always included) is some form of monetary or other compensation to inventors in connection with their efforts under the program.  This is sometimes known as an “honararium”  and it can be structured in various different forms with the intention being to most effectively incentivize inventors to take the time to document their inventions, make IP counsel aware of the inventions and work with counsel as needed in connection with the patent procurement process.   So, for example, an honararium may be set up to pay an inventor a set sum of money (e.g. $1000) upon the filing of the patent application in the US Patent and Trademark Office and may also pay the inventor another sum of money upon issuance of the patent in the US.  There are a great many ways to structure an honararium if desired.  Non-monetary consideration such as key inventor dinners, plaques, etc.  may also be considered and included.

A form, typically referred to as an “invention disclosure form” or IDF, should be developed and widely distributed to all employees particularly those that are most likely to develop potentially patentable inventions.  This form should be standardized and used in all cases as the means for inventors to document their inventions and to submit them to the appointed company representative for processing.  The form will typically include areas for the inventor(s) to address questions such as: (i) what is the problem addressed by the invention; (ii) what prior solutions that problem is the inventor aware of and what are their relative shortcomings; (iii) what is the invention in detail; (iv) are there alternative embodiments to the invention; and (iv) how does the invention fit into the company’s products or services as well as the overall industry.  The answers to these questions can be reviewed by company personnel to determine the relative value of the invention against others and to make the determination whether to file a patent on the invention or not and if so, where.  The company should set up an email box and/or use an online form submission process so that all completed IDF’s can quickly be available for review and processing.

As alluded to above, a critical component of a program is to have a predetermined and consistent process for reviewing, ranking and determining which inventions should be filed as patent applications.  This includes the people included in the decision making process and what their particular roles are, whether or not formal meetings will be held and how often, the criteria to be used in ranking and making filing decisions and whether any additional input and/or technical information will be required prior to making a filing.  The criteria for ranking and making filing decisions often depends on the overall strategic goals of the company but may include, for example, the specific novelty of the invention, the scope of the market/products/services covered by the invention, where the invention fits in the company’s overall portfolio and the detectibility of the use of the invention.

A patent program may also include other aspects such as the periodic education of groups of employees within the company most likely to invent as well as the active solicitation of inventions via calls and in-person meetings.  In some cases, “brainstorming sessions” may be conducted where groups of inventors may meet in person under the guidance of a patent attorney and possibly some technical and business experts with the goal of developing and documenting a series of potentially valuable inventions for possible patent filing.  These sessions may be free form or they may be set up to address one or more specific problems.

Another program aspect is consideration for how invention disclosures, patent applications and issued patents may be tracked.  There are numerous commercial software programs and applications for handling this aspect or this function may be outsourced to outside legal counsel or a company specializing in providing this service.

In conclusion, a patent program can be set up anywhere on the spectrum from extremely informal to a very formal, very structured program such as those used by some of the largest inventive companies in the world.  A solution closer to the informal end is typically most appropriate for smaller innovative companies with the ability to grow and scale over time as the number of employees, the products/services portfolio and the relationships of the company with third parties grow.  With the recent passage of the America Invents Act and its provisions converting the US from first to file to first to invent jurisdiction in 2013, it is even more important now for companies wishing to protect their innovations through patents to adopt and implement a consistent and efficient process for making inventions known within the company and acting on them as quickly as possible.

Do You Want Your Brand Associated with an Adult Web Site?

You may have already heard that the adult industry will soon have its own .XXX generic top level domain.  Trademark owners that do not want to have their trademarks registered as part of an adult site can apply to “block” registration of a particular .XXX domain name.

The most likely targets for the .XXX problem are marks that are seemingly potentially related to the adult industry (e.g., liquor brands), names that would really have a significant issue with being associated with an adult site (e.g., church groups) or brands that may have a suggestive meaning in the adult industry (use your imagination).  However, other brands certainly could also face a risk.

The blocking period (Sunrise B) is set to expire on October 28, 2011.

The application fee for a Sunrise B block varies by registrar but average approximately $200-$400 per domain name.  Since the cost of a Uniform Dispute Resolution Policy complaint is generally approximately $5000 – $10,000, it seems clear that the .XXX block–  at least for the primary trademark(s)/vulnerable trademarks is worthwhile from a cost-benefit analysis.

A .XXX Sunrise B block can only be based upon a registered trademark.  Common law trademarks cannot be the basis of a Sunrise B block.

Some trademark owners may also be dismayed to learn that if an adult industry entity has a valid trademark that is the same as your company’s trademark and it files a claim during the sunrise period, their right to get a .XXX domain name will trump your rights to exclude a .XXX domain name with the trademark.

Naturally, the lawyers at Symbus are available to address your questions and concerns about this latest domain name challenge.

Official Marks: The Canadian IP Superpower

We Canadians have an unusual form of IP protection that you may not have heard about. No, it is not a special form of patent for our hockey players, though someone once asked me if they might be protected by a geographical indication.

Have you ever heard of an Official Mark? No? Are you sitting down?

An Official Mark is an extra-ordinary type of trade-mark protection reserved for public authorities: government bodies, crown agencies, public utilities, universities, colleges and any other party who can meet the two-fold test of governmental control and public benefit. Sorry, these are reserved for Canadian public authorities. Just ask the US Postal Service who were enjoyed public authority status until the Federal Court of Canada decided otherwise in 2005.

So what is so special about Official Marks? Let me give you a list.

1) The Canadian TM Office processes Official Mark requests in roughly half the time it takes to deal with a trade-mark application.

Not impressed?

2) Official marks exist without term, unlike trade-marks which, in Canada, must be renewed every 15 years.

No big deal?

3) Official Marks are not limited by prohibitions against descriptiveness or confusion with other marks. If a provincial government, decides it wants to give public notice that it has adopted the word BAKERY as an Official Mark, it has the statutory authority to do so. All those prohibitions in section 12 of our Act? None of them apply.

Did that get your attention? How about this:

4) Prior registrations do not pose an obstacle to Official Marks. If a public authority wishes to adopt a mark someone has already registered, say ODDBALL TOOLS, then it may do so. A trade-mark registration for ODDBALL TOOLS has absolutely no bearing on a request for an Official Mark. Not only that, the Official Mark will put a brand new fence around ODDBALL TOOLS that was not there before. ODDBALL TOOLS may still be used by its owner, but not for any new uses. So, sorry ODDBALL TOOLS owner, but no, you can’t use your mark with that new product line.

And here’s a kicker:

5) Unlike ordinary registered trade-marks, there is no opportunity for ‘opposition’. Yes, you heard me right. There is no provision for third parties to object. Period. Your client was already using ODDBALL TOOLS? Too bad. There is this small crumb: pre-existing uses may continue.

6) What if your client wants to appeal the granting of an Official Mark? Good luck. Official Marks are virtually unassailable. There is no provision for the appeal in the Act. Oh, judicial review of a decision made by the Registrar may be available, but the grounds are extremely limited.

Baffling, no? This might be classified as one of those laws “in support of public order” that we love so well here in the Great White North. Welcome to Canada, where we believe in peace, order and good government (except when one of our hockey teams blows the Stanley Cup) and extraordinary trade-mark rights for public authorities.

Trademarks and Service Marks: A (Picky) Primer

Now, before you conclude that I’m insulting your intelligence (I’m informed that all of our followers are brilliant), I’ll just say that I know many CEOs that don’t know the difference between a trademark and a service mark. They also don’t have a clue about which symbol to use, and when. So here it is in a nutshell. A trademark is a mark used on a physical product or its packaging. COCA COLA is an obvious example.  A service mark is used in advertising or a promotional piece (like a web page) to identify a service that is rendered; for example, AMERICAN EXPRESS for financial services.  Once you begin to using a mark, use a small TM next to a trademark, and a SM next to a service mark.  Once a trademark is federally registered, both symbols change to a ®.

Sometimes the trademark/service mark distinction can get a bit tricky.  Take software for example.  A mark used on software embodied on a disc is a trademark (that’s easy enough.)  But suppose you allow users to make use of your software on a website?  This is considered a service, except when the software is downloadable, in which case it is classified as a product.

You might ask why these distinctions have any importance, and decide to use a TM on everything.  If you look around the Internet, you will see plenty of big players, who ought to know better, using the wrong symbol.  What’s the big deal?  Only a handful of nit-picking trademark attorneys would notice, you say.  You may have a point there.  However, one symbol error is serious:  using the ® symbol before the Patent and Trademark Office has issued a registration number.  This is clearly illegal, so please don’t do it.

Janice Bader
Member, Symbus Law Group, LLC
Tel. 540-825-3500
jbader@symbus.com
www.symbus.com

Os, (R)s and TMs

I recently wrote a blog post about my high-efficiency grocery shopping habits. In it, I characterized a fellow shopper by the contents of her shopping cart including the ubiquitious Honey Nut Cheerios ®. Now, I did not include the ® symbol in my piece, even though I am a trade-mark lawyer and, technically speaking, I know better. I know that General Mills, Inc has trade-mark registrations for honey nut cheerios in Canada, the US and probably every other country in the free world. I know they take their branding seriously. Still, I did not use that ®.

Why? Well, first of all, from where I stand, here in the wilds of Canada, my use is not a trade-mark use. General Mill may disagree with me about that. They may feel they have to defend against their mark against any use by third parties, literary or otherwise, to avoid its becoming generic. And they would have a point. Still, I did not use that ®.

Nor did I identify the subject box as Honey-Nut O cereal which would be a fair generic description of the product. Why? Because that choice of words is not sufficiently precise. The character in question did not have the store-brand in her cart, she had the big name brand, and that is likely because the six year old in her home refuses to eat the store-brand, insisting instead that mom bring home big brown-and-yellow box with the gleeful little bee on the front. That is the only kind of cereal the child will eat and that detail matters.

But the more compelling reason for my not using that little ®   is that I am a reader. And as a reader I find that little ® and its watered down cousin, ™, to be obnoxious.   It is jarring, interrupting the flow of the piece, as though someone planted a little corporate flag ® in the middle of your morning reading material to cordon off their territory. Hey! This is General Mills talking. Watch your Step! I am sorry, but as a reader, there are some places where the corporate world does not belong.

The trade-mark lawyer in me is shaking her head, of course.

Is this how you would advise your clients?

Uh no. How I advise my clients depends entirely on their circumstances and the context.

Typical lawyer answer.

Well, you asked.

And so did one of my writing friends.  She commented via email (because she is too chicken to post a comment on my blog site). “Um, “Don’t you think General Mills might not be happy about your using their product name. Isn’t that, like, infringement or something. “

“Well, I doubt they’ll notice and how I used it is not infringement, at least not in this country. (And I am not going to get into the potential cross-border issues here. It gives me a headache).

“You know down here they take that kind of thing pretty seriously.”

Now, by “down here”, she means the United States because, as you know moi, je suis Canadienne. And let me just remind you, dear reader:  I am a Canadian lawyer (and reader). I am qualified to opine only about Canadian law. If you would like to know the US legal position on this issue, my talented friend Jan will be more than happy to help you.

To get back to my writing friend, I said:

“Yeah, well, maybe they will send me a big fat cheque for product placement.”

“Would they really do that?” I could see dollars signs in her eyes.

“Uh, no dear. I don’t think they would really do that.”

“Bummer.”

Tell me about it. The upshot of this? Registered trade-mark owners are wise to police the use of their trade-marks by third parties and to insist on the immediate cessation of any offending uses. Writers? Well, you have to do what your conscious dictates.  And if you happen to get called on your literary use of a trade-mark?  Then you are wise to call a lawyer who can provide you with advice.

I know, I know Typical lawyer answer.

Trademarks Across Borders: How do Canadian and US TM Procedures Differ?

Canadian and US trade-mark procedures have much in common, but there are also many differences. For this reason, it is important to have trade-mark professionals on both sides of the border to assist you in navigating each country’s laws. This post will highlight a few of the key differences between US and Canadian TM prosecution.
Fewer Fees!
Canada, unlike most jurisdictions, does not require that the wares and services be divided into classes, with fees payable for each. Only one application fee is payable, no matter how lengthy or diverse the listing of wares and services.
More Fees?
Unlike the US, the Canadian TM Office requires payment of a CDN $200 registration fee at the end of the process.
Classes
Speaking of classes, don`t expect that the Canadian Intellectual Property Office will accept the list of wares and services in a US registration. The Canadian Trade-marks Office demands a relatively high standard of specificity. Examiners will reject terms such as ”appliances”, “apparatus” or “equipment” as too vague, notwithstanding any additional descriptions, and is exceedingly picky about “software”, among other things. Nor should you expect to claim general categories of foodstuffs. “Juices” or “dips”, are likely to be met with a request that you specify what kind. Don`t even think about using the word “including”. In short, be prepared to amend your wares and services listing.
One Register Undivided
In Canada, there is only one TM register and it is national in scope. There are no provincial registers nor is there any “Supplemental Register”.
One Application, Also Undivided
In the US, an applicant may split an existing application based on grounds. For instance, if the original application includes elements of both “prior use” and ”intended use”, the applicant may “split off” a separate application from the original covering the “prior use” wares and services. In Canada, that is not possible. An applicant may delete wares and services, but may not “split them off” except by filing a whole new application.
Grounds for Application
In both countries, trade-mark applications may be based on (i) use of the mark in commerce (ii) proposed or intended use of the mark in commerce, or (iii) registration in a foreign jurisdiction (albeit in Canada, this ground also requires actual use in the foreign country). In Canada, a trade-mark application may also be based on the marks having been “made known” in Canada, i.e. that the fame of a mark in the foreign jurisdiction extends across the border into Canada.
Opposition Period: Double Time
In Canada, applications may be opposed for up to 2 months after advertisement in the Canadian TM Journal, whereas the opposition period in the US is 30 days after publication.
No Evidence Necessary
In Canada, TM applicants are not required to file specimens in order to secure a TM registration, nor is there any automatic requirement to file evidence of use in order to maintain the registration. In the US, a trade-mark owner must file an affidavit of use between 5 and 6 years after registration, and at the 10-year anniversary. In Canada, the only time evidence of use is required is in the event of a third party launching a cancellation proceeding.
The Colder the Climate, the Longer the Term
In Canada, a trade-mark registration lasts for 15 years and may be renewed for 15 year periods. In the US, registrations last only 10 years.
Parting Thoughts
If you are considering registering trade-marks in both the United States and Canada, be aware that each country has unique elements to its trade-mark registration procedure: what may fly in one country may be grounded in another. At Symbus, you have the benefit of experienced counsel in both countries to help you navigate the divide.

Lisa C James, LLB LLM (Intellectual Property)
Of Counsel, Symbus Law Group, LLC
Principal, Lisa C James Professional Corporation (Canada)
170-1 Memorial Avenue, Suite 204, Orillia, ON, Canada, L3V 6H4
Tel. 705-325-2762
ljames@symbus.com
www.symbus.com

Why You Should Obtain a Trademark Registration for Your Blog Name

A friend of mine recently asked me if a blog name could be protected as a trademark. The answer is yes. In fact, if you have a blog or are thinking about starting a blog you may want to look into obtaining a federal trademark registration for your blog name. Why go to the trouble? Whether you are looking for a new job, hoping to land a spot at a top school, or launching your own business, popular advice these days is that in a competitive marketplace you want to stand out and “brand yourself”. That means finding your distinctive voice and style and sharing it with the world often through social media, such as a blog.

A blog could become an important component of your personal brand. If successful you could find yourself with many readers. You may become viewed as an expert in a particular field and asked to speak at various events. You may find that companies want to place paid advertisements on your blog space. For these reasons and more you want to be sure you have a well protected blog name, which is an extension of your personal brand.

You shouldn’t be surprised if once you are successful others want to ride your coattails by adopting confusingly similar blog names. If someone adopts an infringing blog name you will want to find the most efficient and effective way to resolve the matter. Often, the first step in addressing a potential infringement is to send a cease and desist letter to the infringer explaining your rights and why you believe their use of a trademark is an infringement of your rights. Generally, your chance of resolving the matter with a cease and desist letter will be greater if you can attach a copy of your federal trademark registration evidencing your rights in the trademark at issue. Otherwise you will need to rely on your common law rights, i.e., unregistered trademark rights, and you will need to explain this to the infringer. Also, by registering your blog name and using the registration symbol ® you are putting others on notice of your rights and may discourage others from adopting a similar trademark in the first place.

Of course, another good reason to obtain a federal trademark registration for your blog name is that by obtaining a registration you are establishing yourself as a professional that knows the value of protecting your intellectual property.

So, how do you go about obtaining a trademark registration for a blog name? There are three basic steps:

(1) Choose a distinctive, protectable name. A trademark attorney can advise you as to whether your trademark is likely to be capable of registration and the relative strength of the trademark.

(2) Obtain a search of the name to be sure it is available as a trademark. This is not the same search you undertake to see if the name is available as an URL. This search is broader. You can conduct a preliminary search using the United States Patent and Trademark Office trademark search tool: http://tess2.uspto.gov/, and you might want to enter the name in search engines to see if there are other similarly named blogs or related publications. At this point, if you do not identify any obvious conflicts, you might want to contact a trademark attorney that can conduct a more thorough search and analyze the results for you.

(3) File a trademark application with the United States Patent and Trademark Office. For forms and instructions see:  http://tess2.uspto.gov/. The process involves meeting strict deadlines and filling out forms that may contain unfamiliar language. So, again you may want to consult an attorney for assistance.

While obtaining a trademark registration for a blog name is not easy it is well worth the effort, and can help you to build and protect your “personal brand.”

Please note, this blog is for information purposes only. It is not legal advice and it does not create an attorney/client relationship. If you have a question about a specific trademark matter you should seek out an attorney to assist you.

Naming A New Product? Don’t Go It Alone!

Ever try to name a new product? If so, you might have created the name on your own or with a group of employees at your company. Perhaps you even had a contest to encourage everyone at your company to participate and name your great invention. You then contacted your attorney or legal department to file a U.S. trademark application and awaited registration. You thought you had done your job, but at that point your attorney likely advised you that she wanted to search the trademark for availability. More often than not your favorite trademark proved unavailable. Unfortunately, the trademark registries in the United States and around the world are crowded and companies are continually placing trademarks into use on products that are similar to yours. What this means is that it can be very difficult to name a new product without professional branding and legal assistance.

To increase your chance of successfully naming your product you may want to work with a branding agency that can develop many appropriate names for you, rather than just a few. You and your branding agency should work closely with your Trademark Attorney as you develop and review the candidates. If you do this the potential trademarks can be searched for availability before any decisions are made and you will save time and effort on your project.

The search process can be complicated. You must first determine the countries where you would like to obtain trademark rights. Trademarks are territorial in nature and your attorney will want to search the trademark in each country where you are interested in using and registering the trademark. If you are hoping for a global trademark, like Coca-Cola, which is registered and used around the world, this can be complex and expensive. Generally , when searching for global trademarks, attorneys will first conduct preliminary on-line “knock-out” searches in the major markets. That way not all of the candidates are searched in all countries. This saves time and money. Once a short list of viable candidates is established often a more comprehensive search will be undertaken in tiers of countries until the attorney can identify a trademark that is likely to be available in most countries.

Whether you are looking for a trademark in one country or throughout the world, you should be prepared to go through many lists of candidates before you find a few that are appropriate for your product and that are likely to be available for use and registration in your countries of interest. Be aware that global naming projects require much time and effort and are likely to last for many months. Once the final trademark (or trademarks) is determined the filing and registration process can begin. It will take several years before the trademark is registered globally. Of course your company will likely proceed with the launch before the trademark is registered everywhere but you should provide as much lead-time as possible for this process.

While this may seem like a daunting task, obtaining a protectable trademark may give you a significant advantage in the marketplace as you strive to differentiate your product from those of your competitors. Given the complexities of the naming, search and registration process and the importance of the name to your business it is well worth it to obtain the services of branding and legal professionals when naming your new product. You want to get this right!