Questions and answers regarding trademark law and NameRobot's Trademark Check.
What exactly is a "trademark"?
A trademark protects a name or a logo for certain goods and services. The duration of a trademark’s protection is ten years, and can be renewed indefinitely.
A trademark can be defined as follows: all characters, particularly words, including personal names, designs, letters, numerals, [...], which are capable of distinguishing the goods or services of one business from those of other businesses, can be protected as a trademark.
What are word marks and combined marks?
A word mark consists of characters, e.g. words, numbers and letters. Famous word marks for example are 'BMW' or 'Apple'.
A combined mark is a fixed combination of a word or words and graphic elements, such as a company logo. Therefore, a combined mark not only consists of a word, but is also accompanied by one or more icons. It is also possible that the name itself has special graphic features, such as a specific font. An example of a well-known combined mark is Amazon's logo, which comprises the name 'Amazon' and the arrow below it.
A picture mark does not contain any text, and consists solely of its graphic element. The Mercedes star is an example of a picture mark.
What are EU and IR trademarks?
EU trademarks, or more accurately 'Community Trademarks' are valid not only in a particular country but across the whole European Union (as of 01.08.2013: 28 members).
IR is the abbreviation for 'International Registry'. This does not mean that an IR trademark enjoys global protection. Rather that IR protection only applies in certain countries. Currently there are around 80 countries for which IR protection holds. The application is intended to be simpler and cheaper than if you had to apply to each authority in each country. For an IR trademark you must own a national or EU trademark, which can then be spread to other countries.
If you want to use a trademark or business name in a country, you should not only research national trademarks, but also IR trademarks for the country in question. You would also need to search for EU trademarks if you need protection in an EU country.
Can you protect any name as a trademark?
When registering a trademark, there are many possibilities, but there are also some restrictions that you have to consider.
A trademark is not allowed to be purely descriptive. A gardener could not register the name 'Flower' as a trademark since the generic term ‘flower’ must be available for anyone to use. A newsagent, on the other hand, could register the name 'Flower' as a trademark.
You also have to watch out if you have any superlatives such as 'great', 'awesome' or 'best' because they have no distinctive character. Therefore, a trademark registration as 'super advertising' for an advertising agency would most certainly be rejected. Domain components such as 'www.', '.com' or '.co.uk' are not adequate, unless you use them in a very original way, e.g. letsdo.it.
Anyone who wants to protect a domain may do so if it is not purely descriptive (as in CarPurchaseAdvice.com), and as long as it has a distinctive character. Trademark protection provides more security when using the domain.
When are trademarks in danger of being confused?
A trademark is registered to prevent other persons or companies from using the same or a similar name for the same or similar goods or services. If the similarity between two trademarks is too high, then trademarks are in danger of being confused. The similarity may relate to spelling, typeface, tone or meaning.
Thus, for example, an advertising agency with the name 'Superduper' may very well take action against another agency that uses the name 'Sooperdooper'. This is because the names are almost identical with regard to pronunciation and spelling. The danger of confusion between these two names would be very high. Therefore, the second advertising agency should consider a different name.
Are domains also trademark protected?
A domain should be understood primarily as a web address. This means that a domain registration does not automatically entail any protection. Because someone was faster and registered a specific domain first does not mean that he or she has the inevitable right to own and use the domain. A domain can also infringe existing trademarks or naming rights. Even registering a domain might be enough to cause a trademark infringement.
However, the right to use a name as a domain may be valid if the domain has already been used for a long time, e.g. to offer goods, services or content.
In any case, prior to using a domain, you should check whether there are already identical or similar trademarks or other names like company names. It also makes sense to consider whether there are similar businesses, offers, services or websites on the Internet.
What do trademark symbols like ®, ™ and © mean?
The registered trademark symbol, designated by ® (the circled capital letter "R"), means that the preceding mark is a trademark or service mark that has been registered with a national trademark office. Trademarks not officially registered can be instead marked with the trademark symbol ™.
For more information see Wikipedia.
What are the steps involved in registering a trademark?
A trademark can be registered nationally, EU-wide or internationally. National trademarks are registered with a national institution, e.g. the United States Patent and Trademark Office (USPTO) or the Intellectual Property Australia State Office (IP Australia). For trademark protection in the EU, the European Union Intellectual Property Office (EUIPO) offers Community Trademarks which are registered with them. International Registrations (IR trademarks) are administered by the World Intellectual Property Organization (WIPO).
If you want to register a trademark, you can usually find all necessary information on the respective institution's website. However, we recommend consulting a lawyer specialized in trademark law and/or intellectual property. An expert knows exactly how to create a goods and services directory, and helps to identify the potential risks attached to a trademark application.
You might think that the trademark offices would first check to see if a name is already registered as a trademark before any new trademark application. That would be useful, but unfortunately the authorities do not usually carry out trademark searches. Anyone who wants to register a trademark should conduct a thorough trademark search before submitting an application.
The simplest solution: Hire a professional who is familiar with trademark registration. Our partner www.attorney-patent.de, offers a trademark filing service for every need. View our registration packages now: Go to trademark filing service
Where and how can I carry out a trademark search?
If you want to find out whether a name is already registered as a trademark for a particular country, you have to check the national brands of that country, as well as IR trademarks and EU trademarks, if the country is in the EU. For a full trademark search you have to take a thorough look through all relevant trademark registers. Searching for national trademarks alone is not usually enough!
If you want to check your name for Great Britain, for example, you need to check the database of the Intellectual Property Office (which contains trademarks registered in the United Kingdom), the EUIPO (includes EU trademarks which also apply to Great Britain) and the WIPO (includes IR trademarks which may also apply to Great Britain). In Switzerland, you apply to the Swiss Federal Institute of Intellectual Property (where Albert Einstein worked from 1902 to 1907) and the WIPO. EU trademarks have no protection in Switzerland, so the EUIPO directory is not relevant there.
Almost all trademark databases offer a free online search. Using it can be cumbersome, particularly if you want to research several ideas at once. You need to enter all names and their different variations on several search forms. You can save a lot of time by using NameRobot's Trademark Check which was specifically designed for this purpose. It checks all databases relevant to your country with a single click and looks for identical trademarks. This saves a lot of time, not only because you need to enter your name idea onto just one form, but also because you don’t have to tackle all sorts of different search forms on the internet.
For a more thorough trademark similarity search or a professional assessment of the risks of a trademark application, you should seek advice from a specialist lawyer. Please notice, that NameRobot's Trademark Check is steadily growing but doesn't yet contain all trademarks of all countries. At the moment you can research trademarks of the United States, the European Union and Switzerland.
What is the easiest way to file a trademark application?
Registering a trademark is not rocket science if you have the right partner. The easiest way to register your brand name as a trademark is by using a dedicated trademark registration service. Our experienced partner www.attorney-patent.de manages the filing process for you. .
Find out more about the trademark filing service and take a look now at the various packages being offered.