Life Cycle of a Trade Mark Daniel HardmanSmart

Life Cycle of a Trade Mark – Typical life cycle of a trade mark

Contents – – – – – Selection Searching Filing Prosecution Registration Renewal Recording changes

Selection – – – Branding agencies Internal marketing department Brainstorming “Eureka” Sub-brands Brands alluding

Searching – Trade marks are searched to check that identical or similar trade marks

Domain names – First-come, first-served – If available, often secured at this stage inexpensive

Filing & Prosecution & Registration – Probably the area you’re most involved in –

Renewal – In most countries, trade marks are registered for 10 years and at

Changes to the Register – Also known as Recordals – Sometimes it is necessary

Commercialisation – Once your trade mark is known, you will want to capitalise on

Watching – It is important to keep an eye out for later filed trade

Disposal – When a TM is no longer required – You can dispose of

Slides: 13

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Life Cycle of a Trade Mark Daniel Hardman-Smart, Stobbs CITMA Paralegal Course

Life Cycle of a Trade Mark – Typical life cycle of a trade mark – “Cradle to grave” – or involved only on a few touchpoints – The steps do not apply to every trade mark, or necessarily in the order we will go through, but are commonplace CITMA Paralegal Course

Contents – – – – – Selection Searching Filing Prosecution Registration Renewal Recording changes to the Register Commercialisation Watching » » » Enforcement Disposal – Setting the scene for the rest of the course CITMA Paralegal Course

Selection – – – Branding agencies Internal marketing department Brainstorming “Eureka” Sub-brands Brands alluding to a certain quality (not normally the best TMs) – Our involvement? – Negative connotations – An issue for global brands – NOVA » Spanish? CITMA Paralegal Course

CITMA Paralegal Course

Searching – Trade marks are searched to check that identical or similar trade marks do not already exist – Two-tiered approach common: 1. Screening – identical searches for straight knock-outs 2. Full Clearance searching – Searching is a step that is sometimes skipped – not recommended! CITMA Paralegal Course

Domain names – First-come, first-served – If available, often secured at this stage inexpensive – Global brand may want e. g. . com and key cc. TLDs CITMA Paralegal Course

Filing & Prosecution & Registration – Probably the area you’re most involved in – and I will cover it in one slide �� – Filing: an application is then filed with the relevant Trade Marks Registry – Prosecution: this involves dealing with any objections raised by the Trade Marks Registry and/or third parties – Hopefully, there are none or all objections are overcome and the mark proceeds to registration – Registration: where a Certificate of Registration is issued and you now have registered trade mark rights CITMA Paralegal Course

Renewal – In most countries, trade marks are registered for 10 years and at the end of that 10 years they must be renewed – This involves some fees and formalities CITMA Paralegal Course

Changes to the Register – Also known as Recordals – Sometimes it is necessary to record Changes to the Register of Trade Marks, for example: • The trade mark owner changes their or address • A new owner takes over ownership by buying a trade mark registration • A trade mark is used as security against a loan name CITMA Paralegal Course

Commercialisation – Once your trade mark is known, you will want to capitalise on this – Naturally, the owner can use the TM themselves but it's also possible to license a trade mark (allow another party to use it) – A licensing program can involve a third party being allowed to use a TM on merchandise items like clothes, bags, toys, mugs, key rings and so on CITMA Paralegal Course

Watching – It is important to keep an eye out for later filed trade marks that might conflict with yours – Usually done through employing a watching service – Then it is possible to contact third parties or file oppositions against similar and identical marks – Enforcement can be part of the trade mark lifecycle CITMA Paralegal Course

Disposal – When a TM is no longer required – You can dispose of it: • Voluntarily surrenderring/cancelling it • Sell it to a third party • Allow it to lapse (expire) at its next renewal date • Appropriately, this is THE END CITMA Paralegal Course