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Register Marks of Distinction

Register marks of distinction to identify ownership interest in proprietary brands. As intellectual property assets, sport marks accrue value from the goodwill associated with the brands and their owners. As symbols, they denote a standard of quality and value that people come to expect and associate with the sports-related products and services.

For a mark to be registered as a trademark or service mark, it must be a unique identifier of the source of sponsorship or the origin of goods or services. It needs to distinguish the brand from others so as to cause neither public confusion nor deception. It represents a substantial marketing investment to have acquired a secondary meaning associated with the brand. (Click on this link for more information about how to create marks of distinction)

Registration is one of the most important steps in the development and protection of intellectual property assets. An owner can register at the federal or state levels, or rely on what is known as common law rights. According to the United States Patent & Trademark Office (USPTO), common law rights arise from actual use of a mark and may allow the owner to challenge a competing registration or application.

Although advantageous, federal registration is not required to establish trademark ownership in the United States. A federally registered mark is generally easier to protect from infringement. Within the United States, an Affidavit of Use along with samples demonstrating the mark’s actual use in commerce are requirements for federal registration.

Applications and information for federal trademark registration are available online through the USPTO. Their site will direct visitors to the websites of agencies handling registrations at the state, federal and international levels.

Before launching a new mark within the US, first research the availability, then apply for registration of intellectual property rights on proprietary words, phrases or symbols. Signal an intent to use by submitting an “Intent to Use” application covering the classes of commercial trade in which your company intends to use the mark. Then actually use the original mark in the marketplace and place the proper notification on the trademark or service mark.

For a mark that represents a national or international governing body, sports league, team, or sports entertainment property, it can be advantageous to apply in more than one class of trade. This strategy allows the owner of the sports mark latitude to license the rights to marketing partners within those classes of trade. They may be media partners, corporate sponsors or merchandise licensees. Head off potential conflicts by preserving rights in advance of negotiating strategic partnering alliances.

For international sports properties, the registration process and cost of defending intellectual property can add up quickly. Collaborate with legal, marketing, and brand protection experts to develop an international trademark registration strategy. A licensed intellectual property attorney with international experience can add value. Sports marketing and brand protection personnel should remain involved because a working knowledge of the brand’s global marketing strategy is needed.

International trademark registration requires an awareness of international treaties like the Madrid Agreement. To file an international application under the Madrid Protocol, a US applicant first must have a trademark application or an approved registration on file with the USPTO. For FAQ about the Madrid Protocol see: www.uspto.gov/trademarks/law/madrid/madridfaqs.jsp#q4.

Not all nations signed the Madrid Protocol. For a listing of countries see: www.wipo.int/export/sites/www/treaties/en/documents/pdf/madrid_marks.pdf.

Although many countries now recognize a federal registration from a US applicant as a basis for filing, trademark laws differ from country to country. In the United States and Commonwealth countries like the United Kingdom, intellectual property rights are based on “first use.” Under this principle, the first to use a mark in commerce takes precedent over first to file.

This does not hold true in China, where intellectual property rights are based on “first to file.” In places where first to file is used as a basis for registration, it is better to file an application for trademark registration prior to entering the country. File before conducting any business with Chinese companies or contracting with others to do business on your behalf. In the course of doing business together, these agents are likely to register your marks, thereby declaring an ownership interest. It can become difficult later to get them to transfer or assign ownership interest back to your company. For more information, download my article “Intellectual Protection in China: Enforcing Trademark Rights” at http://scholarship.law.marquette.edu/cgi/viewcontent.cgi?article=1386&context=sportslaw.

In China and other countries, uninformed businesses have been caught unaware and unprotected. As a result, they have been unable to safeguard their ownership interests in intellectual property assets. There are plenty of examples of companies who have lost control of their trademarks by marketing their goods and services in China before securing the rights. Once you loose control, these trademarks are no longer marks of distinction.

Register marks of distinction to protect proprietary brands. Share your thoughts about domestic and foreign trademark registration so others can learn from your experience.


  © 2012 Anne Wall, All Rights Reserved.

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