Creating an appropriate trademark and protecting its value is an important element of the marketing business strategy for a company, contributing to define the image and reputation of their products.
The following is a list of principal steps we suggest.
1. Conceive and plan a sign which is easy to read, write, spell and remember;
2. Check that the designed trademark meets all the legal requirements for registration;
3. Identify all classes of products and services of effective and potential interest (under Nice International Classification);
4. Indentify States of interest;
5. Perform a preliminary search to ascertain whether the sign is identical or confusingly similar to a prior trademark;
6. Check that the corresponding domain name is available for registration;
7. File a trademark registration.
Use of the trademark. Registering a trademark will provide a stronger protection, particularly in case of conflict with an identical or confusingly similar trademark, but it is crucial for the proprietor to maintain and monitor its use. In fact, in case of absence of genuine use within 5 years from the registration, a trademark expires and can be revoked through a cancellation action.
Therefore, every company should maintain an archive wherein to save proves of use (for example invoices, brochures, advertising, packaging).
Furthermore, if a trademark is registered with a specific design or graphic character, the owner shall control that the trademark will be used exactly as it is registered. Thus, modifications to some elements of a trademark by distributors or vendors or other staff members can damage its distinctive character because of the risk to have no proves of use.
Many trademarks are changed or have evolved over the years. In such a case, companies will have to be careful and consult an Agent, for evaluating whether to file a new application. For these reasons, an appropriate control for the trademarks' use is the condition for avoiding the risk of expiration and counterfeiting.
Watching Services are recommended to monitor trademark registrations worldwide for identifying whether third parties have attempted to register similar trademarks, or domain names or company names which could conflict with one's trademarks.
Trademark registration abroad. Planning extension of protection abroad has to be evaluated carefully by considering if it will be more convenient to obtain an international registration, or community or national registration to save and distribute filing costs.