Protecting your Brand's Integrity with a Trademark

 In the present fast-paced society and highly competitive environment, establishing a strong brand is pivotal to the success of every other business. Furthermore, protecting that brand deserves your utmost attention too. Yet, a lot of small scale businesses and startups nowadays overlook a crucial step in securing their brand - Trademark Registration.

What can be trademarked?

A trademark is a form of Intellectual Property (IP), which may be any unique name, word, symbol, or device used to identify and further distinguish the goods of one seller from those of others, for instance - Nike's Swoosh (logo). Besides, a trademark allows the seller to safeguard what's trademarked efficiently from both use and misuse by competitors while establishing brand loyalty among the customers. Trademarks also prevent confusion among the customers, who usually come to associate distinct attributes, to be specific quality, with a unique brand.

From a branding perspective, you can protect several assets, including names, taglines, logos, and packaging. However, it is imperative to make a point of the fact that these assets can obtain Trademark Protection only if they meet the subject matter eligibility. A phrase or word that's commonly used or already connected with another service or product in the same industry can't be trademarked. Let's consider an example to understand it. A generic term like "search engine" can't obtain trademark protection; however, a unique name like "Google" can. On the other hand, if your name is generic but used in the industry that's typically not related to the meaning of the term, then you may be able to trademark it, for instance - Apple (tech giant).

As a general rule, you can go ahead with trademarking your business name, if in case you use it while advertising to your target audience directly. If you are not making use of your business name in direct communication with your customers, then you can't obtain trademark protection for it as you are not connecting your name to your brand and also its attributes. Without any second thoughts, if your business name will be a critical part of your overall marketing strategy, then you must consider trademarking it. Additionally, the logo and tagline of your brand can also prove to be exceedingly good candidates for seeking trademark protection. The first litmus test corresponds to whether they are unique or not. The aspects that make a logo unique are the combination of the symbol with the company or brand name, their spatial relationship, and the colors. If the brand's tag line is a unique phrase, then you can consider trademarking it as well. For instance, Apple's "Think Different" connects its brand attribute, that is, quality, to its products.

The Trademark Registration Process

It is not necessarily expensive to obtain trademark protection. In the US, whoever establishes priority in a proposed mark is generally considered as its owner. To keep it straightforward, if you are the first company or individual using a unique mark for identifying your services or products, you don't need to register it for gaining the corresponding Trademark Rights. However, you must add the TM symbol to the brand to which you are claiming rights. Still, it is not a substitute for registering a proposed mark through the US Patent and Trademark Office (USPTO), which indeed establishes ownership to a great extent and beyond a doubt.

It is crucial to keep in mind that everything depends highly on the uniqueness of your proposed mark. In today's digital era, the Internet is undoubtedly a brilliant platform for starting your Trademark Search. You can proactively visit the free websites, like the ones maintained by the USPTO, to make yourself familiar with the already existing trademarks. Besides, you can also consider hiring an attorney specializing in the Trademark Law for conducting detailed searches.

In the US, a trademark can be registered at the federal or state level. State-level trademark registrations are expensive and less potent than the federal trademark registrations. Quite often, a trademark is registered within one industry; however, it may be registered in more than one as well. The best option, without any doubt, depends on the scope of your business and its geographic area of operation. International trademark protection is much more costly, extremely complicated, and expensive to enforce.

If you go ahead with filing a Trademark Application with the USPTO, then it will make sure that no other trademark similar to yours exists. The trademark registration process can take months. Therefore, it is highly advisable to do your homework well, because if your proposed mark resembles an already existing trademark, then your trademark application will face rejection.

It is a matter of fact that yes - the more you try to differentiate your brand from others in the industry, the more convenient it will be for you to safeguard it in the best possible manner. So, pick a name or logo that identifies your brand uniquely and protects it from your competitors.

Ref: https://www.kashishworld.com/blog/protecting-your-brands-integrity-with-a-trademark/

An Overview of Trademark Registration and Protection in Nigeria

 Nigeria, a sovereign country located on the western coast of Africa, is the most populous nation with the largest economy in the continent. It also has a fast-growing services sector with a rapidly increasing need for consumer goods. Without any second thoughts, all these factors do make Trademark Registration a crucial aspect in the nation.

GENERAL INFORMATION

In Nigeria, the Trade Marks Act, Cap T 13, the Laws of the Federation of Nigeria 2004 ("TMA"), and the Trademark Regulations 1990, form the legal basis of trademark registration and protection. The Act defines a trademark that is capable of identifying and distinguishing the source of the goods of one company or individual from those of others. A trademark may include a label, name, brand, device, heading, letter, word, signature, numeral, or any combination of these elements. When it comes to trademark registration, the Nigerian Trademark Law classifies goods into thirty-four (34) international classes. In Nigeria, multi-class Trademark Applications are not allowed; therefore, a separate application needs to be filed for registration in each of these classes. Also, unlike other jurisdictions, 'USE' is not a requirement for the registration of trademarks in Nigeria.

In Nigeria, the Trademarks, Patents, and Designs Registry (under the Commercial Law Department of the Federal Ministry of Trade and Investment) is the concerned trademark authority that governs and deals with the mechanism of trademark registration. The trademark application must be filed by the proprietor or an agent with the exception in the scenario of a foreign proprietor where a local agent must be hired. Except for the bureaucratic delays at the Registry, the time frame to complete the registration procedure is usually 12 to 18 months.

Trademark registration in Nigeria gives an owner the exclusive rights to the registered trademark corresponding to the specific goods or classes of goods in which it was originally registered. If a person or company uses the same trademark or any other mark similar or identical to it, which is likely to deceive or confuse the public, then it becomes a case of Trademark Infringement.

TRADEMARK REGISTRATION PROCEDURE IN NIGERIA

1. TRADEMARK SEARCH - Before filing the trademark application, it is highly advisable to perform adequate trademark searches and determine the availability of the proposed trademark.
2. REQUIREMENTS - The following documents and details are required to go ahead with trademark registration in Nigeria:
   • Details of the applicant or proprietor, including name, nationality
   • Well-defined representation of the proposed trademark
   • Class and specification of goods or services for which the proposed trademark is to be registered
   • Power of Attorney (POA) duly signed by the applicant, and where the applicant is a body corporate, by an officer who is authorized to do the same. Note - No legislation or notarization of this document is required.

3. TRADEMARK APPLICATION FILING - Once all the details in the trademark application have been filled and the same is submitted along with the required documents, the Registrar shall issue an Acknowledgement Form, which confirms the receipt of the trademark application by the Registry. Also, a temporary number is allocated to the pending trademark registration.
4. EXAMINATION - The Registrar then examines the proposed trademark to ensure that there is no already existing conflicting trademark, which may preclude its registration. The examination process shall also extend to whether the mark is deceptive, distinctive, or scandalous in any way or not. The proposed trademark must not contain prohibited words, names of single chemical substances, national flag, Arms of Nigeria or state, names of cities, towns, places, and societies, names of living persons or persons recently dead (except with permission).

If the Registrar gets satisfied with the proposed trademark, he or she shall issue an Acceptance Form, which is generally issued within three (03) weeks after the issuance of the Acknowledgment Form. In the other scenario, a Refusal Form will be issued. In the case of acceptance, the application will be published in the Trademarks Journal to notify any interested party that may have an objection to the said trademark registration.

5. OPPOSITION - Any interested party may initiate the opposition proceedings by giving a notice of opposition within two (02) months of the publication of the proposed trademark in the Trademarks Journal. It is imperative to make a point of the fact that this period is non-extendible. The hearing of the opposition takes place before the Registrar, who shall take the decision after listening to both the parties and considering all the evidence in the matter. Additionally, the decision of the Registrar in this matter may be appealed to the Federal High Court.
6. REGISTRATION - If no opposition proceedings are initiated against the proposed trademark or the oppositions are resolved well in favor of the applicant - the Registrar shall issue the Certificate of Registration to the applicant.

TRADEMARK PROTECTION AND RENEWAL TERM IN NIGERIA

In Nigeria, trademarks are registered for an initial period of seven (07) years starting from the date of the application, which can be further renewed indefinitely for periods of fourteen (14) years.

Ref: https://www.kashishworld.com/blog/an-overview-of-trademark-registration-and-protection-in-nigeria/

How to Get your Trademark Registered Internationally?

You must have worked proactively for a pretty long time now to get to this moment. Your business company has grown steadily over the past few years, as a result of which, you are finally ready and looking forward to transforming it into a global brand. For doing the same, there is a dire need for you to ensure that your Trademark Protection extends well to the international market. As a business owner, you don’t wish to go through all that work only to have your trademark stolen by another person or have it denied outright as a consequence of not following the adequate protocol to have it affirmed in some other nation. So, let us now make ourselves familiar with how you can file an international trademark application and take your business to a global level.

1. Start by getting the trademark registered in your country
2. Going ahead with international trademark registration
3. Seeking WIPO protection

KIPG

Understanding the international differences

Although these systems help significantly in making the international trademark registration process smooth, the differences are inevitable. Hence, there is a need to stay prepared, know the differences well, and understand how you can meet them in the best possible manner to go ahead with filing your trademark application. For starters, you need to know that every country has different rules and regulations in the trademark registration process and the concepts corresponding to the terms ‘distinct’ and ‘trademarkable’ may vary as well. Furthermore, every nation has its specific grounds for refusal, due to which, there is a need to know them before filing your trademark application. You should also put in sincere efforts for ensuring that your trademark application is as specific as possible corresponding to the services or products for which you are going to use your proposed mark. It is also imperative to read the guidelines of the IP office of the nation in which you are looking forward to seeking trademark protection. If you wish to file a trademark application in multiple countries worldwide, you may get in touch with a Trademark Attorney possessing appropriate knowledge of the required paperwork and different systems.

Ref: https://www.kashishworld.com/blog/how-to-get-your-trademark-registered-internationally/

Kanye West's Trademark Application for 'Sunday Service' Denied

The US Patent and Trademark Office (USPTO) has recently denied Kanye West's Trademark Application for the phrase 'Sunday Service' for merchandise because someone else already got the phrase registered five years ago.  Kanye West's attempt to trademark the phrase made headlines this year in July. The phrase 'Sunday Service' is also the name of the gospel-inspired live performance series, which he brought to Coachella in April 2019. The rapper had filed the trademark application to use the phrase on apparel, including jackets, socks, footwear, shirts, dresses, hats, etc.

According to various reports, West has failed to trademark the phrase 'Sunday Service' as a person named Jeff Jonas, also widely known as DJ Escape, got the same phrase trademarked in 2014. Jeff had applied for Trademark Registration of 'Sunday Service' as it corresponds to conducting, organizing, arranging, and hosting events related to social entertainment, entertainment like live music at clubs or concerts, musical and artistic performances, organizing exhibitions for entertainment purposes, music tours, disc jockey performances, and dance parties and night clubs. As per Jeff's Facebook page, he runs a New York-based event series known as 'Sunday Service.'

The USPTO declined the trademark application by stating that the phrase would result in the likelihood of confusion as West's filing to trademark the same was also related to music. However, Kanye West can still submit more arguments and evidence within six months of the trademark application's denial to support his filing. In case he doesn't come forward to take any action, his trademark application shall be abandoned.

Till quite some time, West's Sunday Service events were not open to the general public and were attended by only his friends and celebrities, including Brad Pitt, DMX, Dave Chappelle, amongst many others. In the past month itself, West made his Sunday Service event a pop-up event open to fans in various cities, in a campaign to publicize and promote his brand new album titled 'Jesus is King.'

Ref- https://www.kashishworld.com/blog/kanye-wests-trademark-application-for-sunday-service-denied/

Planning to Launch a Website? Avoid these Common Intellectual Property Pitfalls

Having a lawsuit filed against you in court, or receiving a cease and desist letter is never a welcome occurrence. For diverting multiple resources from your business and moving towards resolving the infringement disputes, it is essential to invest wisely in Intellectual Property (IP) before launching a website and avoid the following common pitfalls.

Pitfall No. 1 - TRADEMARK INFRINGEMENT

After selecting a brand name for your company, website, or product and spending an enormous amount of money in its promotion and marketing, you may receive a letter from another company or individual alleging that you are infringing its Trademark Rights. The plaintiff would demand you to stop the infringement of its brand or name.  In this situation, you will face tough choices - would you rename your brand or pay a lawyer to fight on your behalf?

How to avoid it - Before investing too much in a brand name, run initial searches on the internet and applicable foreign databases like EUIPO, USPTO, and WIPO to come across already registered trademarks and candidate marks. Furthermore, you should also try to foresee the position of your company in the next three years and make sure no other company or organization is occupying a similar space in the business environment. Consulting a Trademark Attorney having additional resources and expertise can offer aid in identifying and evaluating the risks involved if any. Therefore, it would be wise to say that a little amount invested before can save you vastly more down the road.

Pitfall No. 2 – CHOOSING A NAME THAT CAN’T OBTAIN TRADEMARK PROTECTION

While selecting your brand name, you should make sure that the proposed trademark can be registered, enforced, and protected. Additionally, it should also be descriptive and relevant to your business and its marketing strategy so that you face no difficulty in stopping any other company from using a confusingly identical mark or claiming any damages.

How to avoid it - Once you have selected the name, you must file a Trademark Application by covering all the specifications of the proposed mark for your products or services. The application will then go through the examination phase, in which the proposed mark is examined to determine whether it is suitable for Trademark Registration or not. If the application is accepted, then the owner owns the exclusive rights acting as a deterrent to others adopting a similar name.

Pitfall No. 3 – FAILING TO COORDINATE BETWEEN YOUR DOMAIN NAME AND TRADEMARK

After getting your trademark registered, you would want to register the corresponding domain name for your website as well. However, in some cases, you might discover that the domain name, which you were looking forward to obtaining, has already been taken by another company or individual. If the owner comes to know about your plans of launching a web business with the same name, he would either stop you from doing so or ask you to pay a hefty sum to obtain the domain name.

How to avoid it - Coordinating the timing of Trademark Filing and disclosure of the intended name with the purchase of domain name can help in ensuring that both the names are affordable and available at the same time.

Pitfall No. 4 – USING PLAGIARIZED CONTENT

People nowadays often copy the content available on the internet and use it on their websites. Consequently, the owners of the copyrights in that content can initiate legal proceedings against you or demand monetary damages for using the material without their permission.

How to avoid it - Make sure you reserve all the rights to the content published on your website. You must never copy content, videos, or images without the consent of the owner. Furthermore, remember that using names of people or showing their faces while promoting your business may infringe their personality rights. Besides, you should also make a point to have all the agreements and contracts with any third-party content providers in place. Otherwise, the contractual worker will claim the copyright.

Ref: https://www.kashishworld.com/blog/planning-to-launch-a-website-avoid-these-common-intellectual-property-pitfalls/