There are lots of things that cannot be protected through trademark. 
A trademark is not merely a collection of words and/or pictures that represent you.  It must uniquely, yet legally, identify your product or service.  Whether shopping for wine, beef jerky, clothing, or cell phone service, any person on the street should be able to identify your product/service through your trademark: your distinctive collection of words and/or designs.

Like the Nike Swoosh immediately evokes images of athletic shoes and clothing, and McDonald’s golden arches conjure the smell of frying fries, seeing your trademark should immediately make your product/service come to your customer’s mind like an old friend that says “Hey, it’s me!”

So when you are deciding on your product/service or company name, keep in mind the following list of things generally not trademark-able:

1)      Merely Descriptive Terms

Words such as incorporation and company, or words that describe your industry, cannot be trademarked.   They can be included in the overall registration, but they are merely descriptive and give no strength to your overall trademark because everybody must be free to use them.

For example, in the trademark “Xeloshi Clothing Shop”, clothing cannot be protected because it merely describes the services within the industry, and shop likewise merely describes a retail venue where clothing can be found for purchase.  Neither term make the name unique.  

2)      Flags and Insignias

You can’t use any nation’s flag, designs, or words protected by any nation’s law.  You could not protect, for example, U.S. Dept. of Navy Clothing Company with an American flag on it.

3)      Someone Else’s Legal Name or Picture

Trademarks for CHERE and SHER in 003 were rejected based on the singer’s name CHER in 041, even though the goods/services were in vastly different class codes, SHERE, however was registered.  You might not be able to get the name for Ted’s Clothing Emporium unless you were Ted.

4)      Someone Else’s Trademark

If you have a fan club for the #1 hit TV show of the season, you cannot refer to that trademarked TV show by name in your own trademark for fan club services.  If you sell parts for Mercedes, you cannot use Mercedes in your trademark name or product description.

Sometimes even a dead trademark deemed to be still “famous” can be un-trademark-able.

5)      Merely Ornamental Slogans or Designs

I see this primarily in the USA where the registration process requires the trademark owner to submit a “sample” of the trademark being used in commerce (very few countries require samples).

Standard Scenario: 
  • You have a great slogan or design.
  •  You buy a blank t-shirt (keychain, tote bag, coffee mug, wine bottle) wholesale and print the slogan on them to resell.
  • You want to protect your really cool slogan and file a trademark application in class 025 for clothing.
  • Your application is rejected.   Failure to function as a mark…merely ornamental.  You are not the source of goods.

6)      Dirty Words

You can’t register most bad words, though the definition of “scandalous and immoral” in USPTO’S eyes has changed over the years.  Just for fun I did a search in TESS on the term “ass” which has been acceptable since 1971 but “shit” still is not as of June 2015.  The details of this search are the subject of my next blog.

I AM THE CAUSE OF THIS SHIT trademark # 86403924 was rejected for BOTH bad words and merely ornamental.

The revocation by USPTO of the Redskins trademark in USA for a football team, having recently been deemed offensive to Native American Indians, is presently the subject of heated court battles and clearly exemplifies this change in trademark morality.

7)      Informational Material

Some trademark owners like to file their actual label (called Trade Dress).  All the informative information that applies to the public domain (such as a nutritional labeling) is not trademark-able.

8)      Cities In Which You Don’t Live

You cannot claim a geographical location that does not pertain to you.   You cannot use New York in your trademark unless you are located in New York.  A lot of people like to argue that their shop/soap is “in the style of”...Paris, for example, but this claim will not fly in many countries.

In some countries you can’t use a geographical indicator at all.  I recently experienced a rejection to a South Korean application based on the use of U.S.A. in the logo, though the KIPO database does show registration of trademarks using a country in the name/logo, many of which are still live. 

9)      Domain Names

URL’s on empty sites are not trademark-able.  You can trademark your domain name if it identifies your product or service.  The information before and after the “.” dots does not need to be included.  So unless your trademark is used routinely with the extension ( .com, .org, .tv, etc.), you do not need to include it in your application. 

A retail store such as Walmart might use Walmart.com to differentiate its brick and mortar stores from its on-line stores.  Walmart.com registered in 2012 #4180335.

As my business is strictly virtual, I considered marketing myself as “E-TrademarkUniverse.com”, and then requesting a pseudo mark of just “E-Trademark Universe”.  However, I registered just “E-Trademark Universe”, and “www.E-TrademarkUniverse.com” is covered by default.

These are just a few broad examples, and the application of these rules/laws is very different in every country.  Your trademark professional can help guide you.
 
 
Lack of uniqueness and distinctiveness makes a weak trademark.
There are many reasons why trademark owners might choose non-unique terms to represent their products or services.  It’s a family name perhaps.  It’s always been called “this”.  Or even, the desire to look and/or sound like an already well-known brand !

The trademark office will stop many non-unique brands at the gate (at the first review), by issuing a rejection, such as one of these:
  • Failure to Function as a Trademark
  • Merely Descriptive
  • Geographically (Mis)Descriptive
  • Confusingly Similar (Likelihood of Confusion)

There are, however, ways of getting around some these rejections.  Some of them can be registered if they have been in use for 5 years (or 3 or 7, depending on which country).  Some can be registered as a weaker trademark on the Supplemental Register (B) rather than on the Principal Register (A). 

Registration on the Supplemental Register still provides the following advantages:                             

  • The trademark owner may use the registration symbol ®
  • The registration is protected against registration of a confusingly similar mark
  • The trademark owner may bring suit for infringement in federal court
  • The registration may serve as the basis for a filing in a foreign (where applicable)

A weak trademark is still a trademark, and unless the trademark owner expects to actively and aggressively (expensively) defend their trademark from potential infringement, then most trademark owners will not feel any difference in the protection of their brand name from the Supplemental Register (B) versus Principal Register (A).

Should a trademark owner want a stronger protection, his/her trademarks are not doomed to live forever on the Supplemental Register (B).  After X years (X = the minimum legal requirement in that country…X = 5 in the USA), one strategy might be to re-file the application, based on X years usage, and ask to be put on the Principal Register. 

 

STRATEGY TIP:  You should do this at the very beginning of the renewal period (or earlier)

Keep in mind, if you plan on growing, you should choose a name that will “sing” internationally…a name that can be part of your international expansion plan.  Think about how your brand name will “play” in other countries…consistency is key in creating a strong worldwide famous trademark.

 
 
Lower Cost.  Lower Risk.  Less Stress.

Lots of unexpected issues can come up during a trademark renewal whether you do it yourself or use a qualified professional…issues which often need time to resolve and might take a couple of steps, even additional filings, before your renewal can be processed.

Here are just a few of the surprises I have encountered in my experience:

  • Chain of ownership.  It is not uncommon to find an error in a trademark assignment filing such as a typo in the assignment contract…perhaps an inverted serial number or misspelled owner name.  In some countries assignments are merely recorded and not verified. Then you have to prove your ownership and possibly file a corrected assignment.
  • In countries which keep a trademark applicant/owner database, a separate address update might be required before a renewal application can be processed.
  • Because you have discovered, after submitting unacceptable proof of use, that you need to refile your trademark because your logo/colors/font/words has changed.  You have “substantially altered the mark as registered”.
  • It is a common strategy to base a re-filing on the already registered mark and let the registered mark get cancelled after the new one is registered…but you need to start this strategy at the very beginning of the free renewal period.
  • You must take additional steps to respond to a trademark office action because you made a clerical mistake…such as incorrect signature or unacceptable sample or no domestic address…most trademark owners doing it themselves do not address these office actions in a time efficient manner, not realizing they might end up in the late period and incur additional fees, or lose the trademark altogether.
  • A secret USPTO study and your trademark is part of it: 
    www.uspto.gov/trademarks/notices/Post_Registration_Proof_of_Use.doc


Sometimes these unexpected fixings and filings can take so long that you find yourself out of the free period looking at late filing fees.  It is hard to know the state of the backlog at the trademark office, and sometimes things get lost in the “post registration maintenance filing” process, even when processed electronically.  Trademark owners should keep well on top of their trademarks during the renewal process in all countries.

The earlier you file your trademark renewal, the less likely you are to unexpectedly find yourself in the late period filing penalty fees and/or missing your deadline as a consequence, which equals: Lower Cost.  Lower Risk.  Less Stress.
 
 
First of all, most countries do not call them “renewals”, but that is what I am calling any “post registration maintenance filing” required to keep your trademark alive.

Lots of countries have on-line renewal options, many of which seem very easy to use, some of which indeed are, but after you check out the on-line renewal system and think, “Oh, this looks easy!” consider the following:
  • Do you have a local address in that country that will receive and forward your mail in a timely manner?
  •  Do you still use your trademark in the manner in which it was registered? (USA, for example, requires samples which must be accurate or a deficiency fee can be charged by USPTO)
  • Can you provide the necessary non-English translations?
  • Do you have access to foreign currency payment options and/or legalization services?


Then you need to determine exactly when to file the renewal.  It’s tricky, and every country is just a little different:
  • USA after 5, 9, 19, etc years, 1 year free renewal period, 6 month late period with penalty fee (there are 3 on-line options, which do you use when ?)
  •  EU every 10th year, 6 month free renewal period, and a 25% late fee for a 6 month grace period.
  • China & South Korea every 10th year, and all filings, dead and alive, must have a correct address on file before the renewal can be accepted, that address change will cost you extra.
  • And…from when ?  From date of application or date of registration?  It could be one as likely as the other varying by country.

There is also a misconception that you can make changes to your trademark at renewal time with the trademark office.  Globally, I have found this is mostly untrue.  You can file an additional Petition in some countries to request an amendment, for an additional fee of course. 

This might allow you to change very small things like spaces or hyphens or drop a disclaimed word, but you cannot change your logo or your colors or your font or add goods…nothing like that ! 

You are not allowed to “substantially alter the mark as registered”.  If you don’t know what that means, this is yet another good reason to use a reliable professional to manage and maintain your trademarks to keep your brand strong, worldwide.


 
 
Yes.  Some of them, in countries where is possible and feasible.

A trademark can reach the state of “dead” in a variety of ways:

  • The registered trademark has been cancelled by a third party within the trademark system.
  •  The registered trademark was not renewed within the required time period.
  • The pending trademark had activity not answered within the required time period, or loses its arguments against rejection.

In some cases, a Petition to the trademark office can be submitted, always with additional fees and often with increased risk, because your brand name is vulnerable when it bears the “dead” designation in the trademark office database.

Therefore, it is possible that a trademark showing a status of “dead” when you do the search, could still end up being “live” and registered only months (or years) later when your trademark application has its first review, which could cause your application problems.  Of course it is impossible to know which trademark owner might take the additional step of filing a Petition, and which will not. 

There is a more direct and useful use for dead trademarks, however, and that is to discern patterns at the trademark office.

Let’s take the term “realtor” in USA.  A direct hit search brings up 135 “live” trademarks...about 30% of which are pending.  Without going into each record individually, this tells us very little.  However, just by changing the formula to show “dead” marks instead, 483 trademarks show up, most of them “dead” without achieving registration.  This search tells us a great deal. 

By looking at the office actions of only 3 recent rejections, one can easily see that there is a pattern by the trademark office to reject new filings with the term “realtor”.  Further research shows that there is also a pattern of opposition filing (and winning), if indeed the trademark makes it past the first review.

I specifically use the USPTO as an example, because it is possible to see both office actions and oppositions filed.  However, I use the strategy of searching dead trademarks whenever that information is available from the trademark office. 

NOTE--I would like to mention the EU, where no first review rejection process exists, that the “dead” trademarks and oppositions filed against them, to be an essential part of well performed search.

 
 
In this difficult small business economy, many trademark owners pursue a strategy of proceeding straight to registration without doing a trademark search first, usually as a budgetary measure.

We certainly understand budgets, but omitting the search before registration is penny-wise and pound foolish, in the words of my mother.

It takes an experienced search strategist to search for all the variations that might cause rejection due to “Confusingly Similar” or “Likelihood of Confusion”.
  • Rejection can be based on phonetic similarities which may be spelled entirely differently:  VIA / VILLA / VIYAH / VEEAW / FIA / FEEYA
  • Rejection can be based on translation similarities, using entirely different words/phrases:  MANNER / WAY / MANERA / MANIERE / METHOD
  • Rejection can be based on word similarities: STREET / BOULEVARD / AVENUE / LANE / PASS
  • Rejection can be based on similarities in coordinated class codes, not only in the exact class code: FOOD ITEMS FALL INTO BOTH 029 / 030  with an additional 6-10 class codes which should be considered in the search as well

Many countries have a free, on-line, searchable database.  These generally return direct hits only, essentially identical matches to the term and class code you enter.  This an excellent place to start your search, but should not take the place of a professionally performed search.

For example, a search in USA on “realtor” returns over 100 “live” trademarks.  On the surface that looks good, “realtor” is considered by most to be a generic term for a one who sells real estate.

However, the trademark search revealed facts never expected…file a trademark application which includes the term “realtor” in the USA, and you’ll most likely find that application facing opposition before it is 30 days old.  This is the kind of fact which would be difficult to ascertain from the free on-line search by a layman, but would be readily apparent in a search performed by a professional.

OTHER GOOD REASONS TO HAVE A PROFESSIONAL TRADEMARK SEARCH

  • The trademark search can also provide good marketing information, such as similar (but not identical) brand names already out there, which might lead a trademark owner to consider modifying the name before launching an international sales campaign. 
  • Some country searches include common law matches as well; another good marketing tool.  A brand can have common law rights even without formal trademark protection.
  • A search can also, in some countries, provide additional insight on potential opposition.  For example; some trademark owners aggressively use Trademark Watching to “police” their own trademarks and actively file oppositions.  This information could be of use to the trademark owner when making a decision on whether “Likelihood of Confusion” exists.  Few like to face the possibility of litigation (and litigation costs) when they have barely entered the marketplace.
  • In some countries, reviewing dead trademarks, not only live trademarks, can provide insight on recent trademark office trends.

Excluding the trademark search performed by a professional is penny wise and pound foolish, and should not be omitted in an international expansion plan.

 
 
When you have Worldwide Trademark Watching service for your brand name, you will be notified when a similar or identical trademark application has been filed anywhere in the world, therefore allowing you to oppose any trademark you think may to be too close to yours.

This is a way to “police” your own trademark, especially in countries where you do not yet have formal trademark protection in place (i.e. trademark registration).

A situation we see often is when you only make a (couple of) small shipment(s) into a country…then your customer/distributor/agent in that country will often register your trademark with themselves as owner (not you) before you have a sales plan in place, which would include a formal trademark registration.

Then, months or years in the future, once you have determined your market is strong enough in that country, you do a search (or worse, you don’t do a search) only to discover that your agent owns your brand name, and you have to take additional steps to get it back from an entity which may or may not still be friendly to you. At best you must do an assignment, at worst, you must litigate to get back your own brand name.

Worldwide Famous basis can be used to win a variety of arguments:

“Merely Descriptive”

“Confusingly Similar”

“Opposition”

“Cancellation”

The above are the four most common “litigation situations” in which the Worldwide Famous arguments might be effectively argued in many countries (some countries support worldwide famous arguments more than others).

Your ability to use the Worldwide Famous arguments will depend on:

--the consistency of ownership (every single mark has to be owned by the same entity).

--the consistency of the goods listing.

--the sheer number of countries in which your brand already has trademark registration.

--the dates of registration in each country…the older the better in terms of Worldwide Famous Trademark strength.

Worldwide Trademark Watching will check all the Trademark Gazettes published anywhere in the world and is a good alternative to having your own registration in each country, which most businesses find to be cost prohibitive.  Having a strong Worldwide Famous Trademark will help you win when litigation is necessary.  Opposition litigation on a trademark application is much less expensive and easier to win than cancellation litigation on a trademark registration.

 
 
Once you have started your trademark’s legal worldwide presence, by having lodged your application in your country of origin, you can “police” your own trademark worldwide without actually having applications filed in any other countries (yet).

In nearly every country, a trademark is published in the Trademark Gazette.  The period is called the Opposition Period, which generally lasts 30-90 days.

When you order worldwide trademark watching service, we watch all the Trademark Gazettes around the world for all exact and similar brand names to yours, everywhere in the world:

--Exact matches over all class codes

--Phonetic (how it sounds) as pertains to your specific product(s)

--Spelling (how it looks) as pertains to your specific product(s)

It is generally considered impossible and impractical to (try to) protect your brand name in every country, due to usage issues and the mere matter of overwhelming costs.

However, you might find, internationally, that some countries make a business of “infringing” on well-known brand names, i.e.; they will use your brand name in an attempt to capitalize on your established trademark….they do this by registering your brand name in their country and claiming it as their own.

The failure on your part to manage these infringers will create a “likelihood of confusion” within the market place, which means that you might find your brand name already owned by others when you go to register it yourself. 

The cost to file an opposition to a pending trademark is less than the cost to file a cancellation against an already registered trademark.  Once the trademark is registered, it is much stronger and therefore harder to fight.

Not ALL trademark similarities are due to intentional infringers.  I have seen more than one case of similar (or identical names) just due to circumstance.  Your family name registered in the EU, which is identical to a brand in South Africa.  Two wineries, both with legitimate claims to the identical name, but only one can occupy trademark space, in the eyes of the trademark offices.  There are ways, however, to meet this challenge head on, whereby both parties can have legal rights to the same name with similar products.

Trademark Watching, the policing of your own brand, is highly recommended as an efficient and cost effective way to manage and protect your brand name worldwide, without the high cost of maintaining a registration in every country where you are currently or maybe soon to be doing business.

 
 
The FDA carries out inspections and investigations whose purpose is to assure that international standards for food, drugs, biologics, and medical devices intended for import into the USA meet the requirements of the FMSA signed into law in 2011. 

First on that list are obviously companies with a bad history, ie., previous violations, or recalls.   Some industries require a routine overview for various legal reasons, or a company that has potentially harmful practices might be reported by a customer or employee or importer to the FDA In a variety of ways.

All of these seem perfectly reasonable, the kinds of company not complying with the law. How do the rest of us food and beverage manufacturers get picked ?

The FDA also uses “a tiered approach based on factors such as risk, volume of products, complexity of processes, etc.”  It could be as simple as geographically convenient, because the inspector is going to your country anyways, though they try to inspect only one type of product at a time.

Based on the volume of imported products from specific areas, the FDA maintains permanent offices in China, India, Europe, Latin America, and Sub-Saharan Africa. 

Failure to register your facility with the FDA is prohibited.  If a foreign (food/beverage/medical device) facility is required to register with FDA, but fails to do so, that company runs the risk of having their exported products from their unregistered foreign facility seized by USA customs and destroyed before actually arriving in USA.

Seems like a big risk for a small registration that lasts 2 years.

New facilities, register now !  so you don’t have to file again until 2016.  Already registered earlier this year (or last) ? You must do it again by December 31, 2014.

 
 
The globalization of the last century has resulted in a myriad of imported goods that Americans want or need.   The USFDA (US Food & Drug Administration) has been around in early form since 1848, modernized in 1906, and given its current name in 1930.  The mandate changes with the signing of every new law.

The FSMA (Food Safety Modernization Act), signed into law in early 2011, is the most sweeping reform of US food safety laws in more than 70 years because its goal is to shift the focus from responding to food contamination to preventing it instead. 

Based on the volume of imported products from specific areas, the FDA maintains permanent offices in China, India, Europe, Latin America, and Sub-Saharan Africa. 

The FSMA registration requirements apply to domestic and foreign food facilities that manufacture, process, pack, or hold food for human or animal consumption.  Food facilities required to register with FDA must renew their registrations with FDA every other year, during the period beginning on October 1 and ending on December 31 of each even-numbered year, regardless of when the initial filing was made. 

The failure to register your facility is a prohibited act.  If a foreign food facility is required to register with FDA, but fails to do so, exported product from that facility into the U.S. is subject to refusal.  It could be seized by customs and destroyed without ever leaving port of entry in USA.  It certainly will not be returned to you.

Seems like a potentially big loss for a small registration filing that last 2 years.

New companies, file now !  then you don’t have to file again until 2016.  Existing facilities even if you registered earlier this year (or last) you must file this renewal in 4th Q 2014.