Trademark Prosecution

Trademarks create and define your brand, helping to distinguish your products or services form those of your competitors. A trademark can become the most valuable asset you have, defining your reputation, so they should be filed and registered, and then enforced, to discourage others from copying yours or taking advantage of your reputation.

Trademarks come in many forms, all of which can act as a unique identifier for your customers. You can now register and protect trademarks consisting of:

A brand name
Logos
Slogans, catchphrases or expressions
A particular design
3D shapes (such as a distinctive type of packaging or structure)
Sounds, Scents and other sensory characteristics
A movement or moving image

Trademark Registration and Filing Requirements – What should you consider?

First you should check if someone has already registered your trademark, or perhaps you are worried that your logo or trademark has unintentionally copied someone else? We can conduct a clearance search to identify if the same marks or something very similar has already been filed elsewhere, as these may prevent you from registering or using your trademark as well as alert you to rights owners that might create problems for you should you continue to use your intended mark.

There are also certain conditions that have to be met, and your trademark application is likely to be rejected if:

Your trademark is too descriptive – It is very difficult to register generic trademarks, or those related to a particular characteristic, feature or function of your products or services.
Your trademark is misleading – Such as trademarks that are designed to mislead or fall outside of the ‘spirit’ of current legislation.
Your trademark contains official marks – If you include a known mark, such as a national flag, without permission.

The above guidance is a good starting point but Zacco can help you to navigate all current legislation and requirements, increasing the chance of a successful trademark filing. We can identify new markets and assess where a national trademark might be more useful than an EU Trademark (EUTM) filing, or even using an international filing system, such as the Madrid Protocol.

Trademarks on the internet – Protecting your digital brand

As the world moves online, trademarks are increasingly being used to protect your brand across the internet, including social media and online marketplaces. A clearance search can include identifying identical, similar, misspelt or relevant domain names, or the availability of social media account names, and we recommend that these be registered at the same time as filing an application. Domain name hijacking is a common occurrence within trademark protection as people will scan the latest trademark filings and register any available related domains, intending to sell them to the new trademark owner at inflated prices.

We can also help you to develop a comprehensive online brand protection strategy, including navigating the different regulations and restrictions within each jurisdiction of domain registration, identifying what channels are most likely targets for IP infringement and a continuous monitoring service that identifies use of your branding or registered rights across all open channels of the internet.

Online branding operates across international borders and working with Zacco means you have access to experts in all areas of digital and online brand protection. We are able to anticipate and accommodate the complementary digital requirements of your expanding IP Portfolio.

Local Knowledge, Global Reach

We work with direct trademark prosecution in most markets but our international network ensures the protection of your trademark across the globe. We can help with everything necessary to support and guide you through each stage of securing your rights including:

Trademark IP Strategy
Clearance and Pre-Filing Research
Filing and Registration
Licensing or Trademark Acquisition
Trademark Enforcement and Combatting Infringement
Combatting Trademark Infringement

For more information, or to learn more about what a successful registration and safeguarding of your trademark rights could mean for the development of your brand, reach out to one of the following people:

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