Trademark Protection

• Unregistered trademarks: based on common law rights, they do not require formal registration and are signified by the ™ symbol in some jurisdictions.
• Registered trademarks: identified by the ® symbol in some jurisdictions, these provide nationwide or international protection, depending on the registering office.

Of the two, registered trademarks offer by far the most substantive legal protection. Unlike their unregistered counterparts, registered marks receive the full benefit of codified rights conferred by the laws of their issuing jurisdictions (the U.S. Lanham Act, the EU's Directive 2015/2436, Japan's Trademark Act and so on). International registration is possible through the Madrid System administered by the World Intellectual Property Office (WIPO). As the 114 members of the Madrid Union pledge to respect trademarks originating in other signatory jurisdictions, this is an efficient way to extend IP protection across more than 80% of world trade.

Infringement of your exclusive trademark rights can lead to civil penalties — or, if the offense amounts to counterfeiting, the possibility of criminal charges.

For a trademark to be registered (and remain as such), it must:

• Demonstrate originality: The specifics of eligibility vary by jurisdiction, but marks must always be distinctive. They should not be generic terms or, generally, contain elements that can reasonably be considered obscene or inflammatory. Nor should they be what are called "descriptive marks" that explicitly outline a product or service's primary purpose.
• Be suggestive, arbitrary or fanciful: Suggestive marks can allude to a product or service's function (e.g., Microsoft). Arbitrary or fanciful marks, however, are much more likely to impress examiners. The former refers to known words used in a novel context, e.g., "Redemption" for a whiskey brand, while the latter is something unknown in the host language, like "Pepsi." Many soft drink brands have colorful names, but "Pepsi" is fanciful since it is an invented word, whereas "Sprite" is arbitrary because the term has an established meaning unrelated to soda.
• Bear the ® symbol in all appropriate jurisdictions: Failure to show the registered trademark symbol in conjunction with the relevant IP can limit enforcement options and damage the trademark's legal protection in some jurisdictions. Conversely, displaying the registration symbol in jurisdictions where it has not been conferred may lead to stiff penalties.

Actively using a trademark in commerce, or demonstrating an intent to do so, is a requirement to maintain registration. As a consequence, you will periodically have to affirm (and possibly prove) the mark's use or acceptable non-use in certain jurisdictions. Additionally, most countries permit members of the public to request the cancelation of a registered mark that has not been commercially used for several years (usually three to five).

First, conduct a trademark search to find any identical or similar mark that could imperil your registration attempt. Dennemeyer's professionals can provide invaluable assistance here. Having completed this step, your next move will be to file a trademark application with the IP office in your primary jurisdiction and pay the appropriate fees.

Along with the basic application form, you will need to specify the goods and services to which the trademark applies, and drawings or specimens may also be required. Some trademark offices have special description requirements for marks that use precise colors or are non-visual (scents, sounds, etc.).

An initial trademark filing will likely cost at least several hundred U.S. dollars (or the equivalent) as the fee is typically tied to the number of classes indicated. Countries that require statements of intent to use may call for additional payments. Extension requests, appeals, amendments and (if applicable) post-registration declarations can also add to the overall cost.

Trademark registrations can be renewed indefinitely if all relevant fees are submitted at the appropriate intervals. Periodic declarations of use are also necessary in some jurisdictions. This means key branding elements can be safeguarded for decades by combining Dennemeyer's protective services and strategies with a mindful attitude toward portfolio management.

Dennemeyer's Trademark Monitoring service includes ongoing searches for identical or overly similar marks that have received or are pending registration in jurisdictions relevant to you. If any surface, a Dennemeyer & Associates lawyer or member of a trusted partner firm will file an opposition or nullity action. Depending on the circumstances, this may require more than arguing the marks' similarity. Your trademark attorney may seek to prove that the contested mark would confuse consumers, create unfair competition or detract from the distinctiveness of your trademark.

Lastly, we can work with you to develop anti-counterfeiting strategies, remaining vigilant for signs of criminal infringements of your IP.