The concept of a trademark has gained massive popularity in the modern business environment. Trademark is defined as a word, phrase, or logo that identifies the source of goods or services. As the name suggests, it is a mark that identifies a company and distinguishes it from its rivals in the market. The concept of defining the identity of business emerged because of the existence of companies offering similar products in the same environment.
It is prudent for a company to register its trademark to avoid cases where its brand image and name is abused by unethical business entities or individuals. Each country has its legal system that defines what a company needs to do to have a right to a given trademark. Although there may be variations from one country to another, it is a universally accepted practice for one to register a given trademark to have exclusive rights to its use in a given market. The United States has a set of rules and procedures that must be followed before one can claim full ownership and rights to a given trademark. The following are steps that one needs to follow to gain such rights:
1. Selecting a Mark
When a business entity decides that it is appropriate to have a trademark, the first step is to select a mark. Based on products that the firm will offer to its customers and the appropriate product proposition, a firm may choose a given pattern of words and images that it considers suitable. It may be necessary to hire a graphics designer to develop an impressive mark that will be presented to the United States Patent and Trademark Office (USPTO) for approval. It means that the company may need to conduct its research about the existing trademark brands to avoid possible cases of rejection once it is presented for approval. In case it is established that the desired mark already exists, then the owner of the new mark will need to make adjustments to the proposed mark. Such personal initiatives of looking for an original and unique mark eliminate time wastage.
The team should be sure that the mark that is developed is not in active use in the local and also preferable international markets. Choosing a strong mark that will have the desired impact on customers who hear about it. The chosen mark must observe ethical and cultural concerns within a given market. In some societies, specific colors, animals, and images tend to be offensive based on beliefs and practices. For instance, the use of a pig as one of the images of a consumable product may not be appropriate when the firm is operating in a market with a significant population of Muslims. They will find such marks offensive and are likely to avoid purchasing the products bearing the image.
2. Filing an Application
When a firm is convinced that it has a trademark that effectively represents its products and policies under which it operates, it will be appropriate to file an application for its registration. At this stage, it may be necessary to hire an attorney who will be responsible for the entire process of getting the trademark approved. The government, in its effort to integrate its services, improve customer experience, and reduce the time needed for the application, has made it possible to make the application online. In the application, the identity of the trademark owner (which sometimes may be a business entity) must be defined, including the physical address and relevant contacts. The chosen mark must be depicted in a clear way that can be understood by the authorities responsible for the approval. It is a legal requirement for the applicant to state the basis for filing the trademark. An application will only be considered valid if it states either of the following factors as the reason for its registration.
The first is a use-in-commerce trademark. In this case, the applicant contends that the trademark is already being used in operations of a given business entity and it is in the interest of the applicant to register the mark so that it can enjoy its benefits exclusively. The second valid reason is intent-to-use. In this case, the applicant explains that the mark is to be used in a soon-to-be-started business entity. The period within which such a business is to be started should be stated. Doing so is important to avoid cases where people register trademarks for speculative purposes. Common speculation is that a large company may come to the local market interested in using the trademark. The person who registered the trademark would make quick money by selling the mark. The law forbids such unethical practices when making an application for the registration of the mark. The applicant will also make the necessary application fee which may vary depending on the class of goods and services for which it is registered.
3. Approval of the Trademark
It is the responsibility of United States Patent and Trademark Office (USPTO) to inspect and approve (or reject if necessary) an application for the registration of a given trademark. Once a request is received, the authority will evaluate it based on a number of factors. First, it will look at the brand name and images to determine if they are ethically appropriate. For instance, an image that depicts nakedness or practices that the society considers immoral may be rejected without allowing it to advance to the next stage. The interest of members of the public is often given precedence over desires of the applicants at this stage. If it is established that the name, image, and other attributes satisfy the moral standards, the next stage will be to evaluate the purpose for which the application is made.
The authority must be convinced that the mark is to be registered for a primary reason for conducting business within the country. In case the business is yet to start its operations, there must be a clear timeline provided on when it will begin. If these demands are met, the next stage is to establish if the mark or name has a high index of similarity with other existing brands to the extent that it may confuse. In the past, the comparison would be done manually. It was a demanding process. It has been simplified by emerging technologies. It takes a relatively short time to compare the proposed mark with other marks to determine any similarities. In case the authority identifies anomalies at any of the stages of assessment, a preliminary rejection will be issued stating the area of concern that needs to be addressed.
The applicant has two options to respond to such a rejection. First, the entity may consider making appropriate changes in line with the identified issues with the logo. If the applicant feels that the chosen mark is the best and does not infringe upon any other company’s trademark, it may launch an appeal against the decision. The appeal will be evaluated, and if it is established that it lacks merit, the authority will issue a final rejection. When the final rejection is issued, the applicant will need to start the entire process afresh with new marks. Instead of launching an appeal, it is always prudent to follow suggestions of the authority and make the necessary changes because it saves time and eliminates the need to pay the application fee twice. However, the attorney assigned that task is best positioned to offer the most appropriate actions that should be taken based on the unique needs of the firm and realities that it faces in the application process.
4. International Registration and Maintenance of the Trademark
After the registration, it is necessary to keep the registered trademark valid. The trademark validity may expire after a specific period. Different countries have varying dates upon which it must be renewed. Otherwise it may no longer be valid. Locally, it is necessary to file a Declaration of Use or a valid reason why it is not in use after every six years otherwise it will be canceled. The owner of the trademark is also required to renew the application after every ten years. The process of renewal is not as challenging as that of an application. The business owner only needs to reaffirm its commitment to continue using the trademark and pay the necessary fees in the process. The renewal will be automatically approved after that unless there is a valid reason not to do so.
It may be necessary for a company to register its trademark in the global market. The need may arise if the firm has intentions of going global with its operations. The Madrid system for international trademark registrations allows business entities of its member states to make a single application that remains effective in all the participating countries. It works alongside the World Intellectual Property Organization (WIPO) to ensure that trademarks and other copyrights are protected. Once approved, the owner of such marks will need to renew their applications after every ten years. In case the country of interest is not a member of the Madrid System, the trademark owner may be forced to make direct application with the trademark and copyright authorities of the relevant states. Finding a local attorney who understands the local forces in such countries may be advisable. The lawyer may provide relevant advice, especially if it may be necessary to modify the mark in line with the local needs.
The Lanham Act and Trademark Registration
Just like citizens’ physical possessions, intellectual property and the results of artistic and brand development endeavors must be protected. In the U.S., the Lanham Trademark Act of 1946 enables trademark owners to prevent the unauthorized use of their brands’ hallmarks. Clear and unambiguous rules regarding the terms and conditions of trademark registration would prevent the abuse of power and inappropriate commercial competition strategies, such as imitating other brands for profit or defamation.
The Lanham Act has been created to minimize the risks of controversial trademark-related situations by limiting opportunities for registration with reference to certain categories of claims. Firstly, trademark registration is prohibited if there are substantial similarities between a new application and already granted trademarks, including company and domain names. Secondly, the act seeks to prevent the registration of trademarks that do not have well-established secondary meanings and would, therefore, be perceived as names or general descriptions. Specifically, the use of trademarks that are “primary merely a surname” is not allowed unless there is solid evidence that this name and a certain business are synonymous in the mind of the public. These restrictions give the pride of place to the uniqueness and public recognition to prevent disputes.
Apart from making trademarks’ distinctiveness a priority, the Lanham Act restricts the use of any symbols of national significance, thus promoting ethical conduct in business settings. For instance, trademarks containing the pictures of the U.S. flag or buildings associated with the authorities are strictly prohibited. At the same time, the elements of flags that have been made up by applicants are acceptable as long as there is no strong resemblance between them and any emblems protected under international agreements. Without this rule, there would be trademarks that could suggest inaccurate ideas concerning businesses’ relation to and partnerships with some official bodies, resulting in misinformation.
The Lanham Act aims to guard the nation’s perspectives on morality by preventing the registration of trademarks that contain anything perceived as immoral or offensive, but the rule’s constitutionality remains an issue. Under the law’s disparagement clause, any trademarks that may falsely suggest connections with beliefs, institutions, and specific population groups, bringing them into disrepute, are illegal. At the same time, from court practice in the U.S., trademarks that convey positive messages about individuals and groups can be registered, making the message’s communicative goal central to decision-making.
The act’s disparagement provision intended to impact all offensive/derogatory trademarks to the same extent. However, in fact, it emphasized the conveyed message as the basis for registration decisions. In the case of the FUCT trademark, according to the Supreme Court, it was decided that the disparagement rule was contrary to the First Amendment to the Constitution of the United States. Thus, the inability to fully implement the Lanham Act while also supporting U.S. citizens’ constitutionally protected freedom of speech has been recognized as an opportunity for improving the guiding principles of trademark legislation.
To sum up, the discussed act has established clear trademark registration practices and prohibitions that guide the decisions of the U.S. trademark and patent authorities. The promotion of content’s uniqueness and a special place in the nation’s mind emphasize the role of distinctiveness in business matters. However, the law’s constitutionality is called into question due to the ongoing conflict between moral considerations and free speech.