National or International Trademark Protection Dilemma

 The dilemma often faced at the national or global level is that every trademark is not legally protectable. For example, arbitrary and fanciful marks are inherently distinctive and hence easily protectable. Descriptive marks are considered weak. USPTO does not register weak marks unless they become part of a common lingo and have extensive use over five years. The situation becomes further complicated when generic words such as World's Best or World's Leading are used. These words are not registrable because everyone has the right to use these words for promoting their goods and services.

 

It is recommended to do a trademark search before applying. There is a comprehensive search system offered by USPTO, called TESS (Trademark Electronic Search System) (USPTO, 2019). If a similar trademark is already filed or pending for registration, the new request will be refused. Another dilemma that organizations encounter while searching USPTO database is that the database does not include trademarks that are registered to third parties without federal registration. These rights are popularly known as ‘common law rights’ and are acquired within a specific geographic location (Hashkins, 2016).

 

You may also need to consult trademark lawyers who review the application process and ensure optimal trademark protection by classifying the product and describing the scope of the trademark rights. It should be remembered that a trademark drawing may appear in two forms: standard character form and special form. A standard character format is used to protect the wording with no regard to the style, font, size, and color. However, if the trademark includes a logo or design, the organization has to opt for the special form design format.

 

Another dilemma that the organizations usually face is that a USPTO registration remains effective only within the boundaries of the U.S. It is even though the trademark is assigned an international classification number. If a U.S. entity requires protecting the mark outside the U.S., the firm has to file an international application in the country of interest. It works under the provisions of the Madrid Protocol. If a firm is a multinational organization, protecting trademarks in all those countries may become a tedious and daunting task. Madrid Protocol provides some relief for trademark owners. They can file a single application for all countries of interest, but the application should be for one specific language such as English, Spanish, or French (WIPO, 2019). A separate application is needed for another language.

 

A dilemma in the trademark protection is the territoriality of rights. The registration is valid only within the borders of the country where it was provided. There are 200 world destinations in which trademark registration can be obtained (Bryer, 2015). For the worldwide protection of trademark, country-based or region-based protection will be required. World Intellectual Property Organization (WIPO) has published a directory of Intellectual Property Offices that can be referred to by an organization for international trademark registration (WIPO Directory, 2019). No single, unified system in the world can provide overall international protection through a single application. However, certifications obtained through the Madrid Agreement or Madrid protocol reduce the workload through different classifications based on languages and regions (WIPO, 2019). As a rule of thumb, organizations should pursue trademark protection in those countries where copyright laws are strictly enforced such as U.S., Canada, and the UK. In the other case, the registration will be an exercise in futility because no legal remedies will be available for trademark infringement.

Organizations and individuals may face some or all of these dilemmas in national or international trademark protection. Some countries do not enforce strict penalties and sentences for trademark infringement. Hence, in the online and connected world of today, it is challenging and complex to protect the trademarks at the local, regional, and global level.

 

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