Everything you really need to know about iGERENT's Services
When determining if a domain name can be registered as a trademark, the TOP LEVEL DOMAIN element (gTLDs or ccTLDs) such as .com, .net, .eu, .us, should not be taken into consideration. Therefore, it will depend entirely on the words that make up the domain name of interest. If the words that make up the domain name do not fall into grounds of non-registrability, then registration is possible.
Although practice may vary in different countries, if a domain name is registered within a trademark, the TOP LEVEL DOMAIN element (e.g. .com) must usually be disclaimed, and protection over this particular element is renounced.
Example of the disclaimer: NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ".COM"
If your name is used to identify your products or business, then you can and should register it as a trademark. Nevertheless, if your name is identical to a famous name, or is one that may lead consumers to believe that the products or services are associated with someone else, registration may be refused. Depending on the country in which you wish to register, the limitations or requirements may vary.
Music groups may apply to register their names as a trademark (service mark). As they provide live musical performances, they qualify for registration in class 41.
If the music group is successful, registering their name as a trademark would also be advisable for different merchandising products such as audio records or digital music in class 09, posters in class 16 or T-shirts in class 25.
4 Can I apply for a trademark that describe the goods or services for which the trademark is applied?
If a trademark merely describes goods or services, consumers will not be able to differentiate the trademark from those used by other traders for similar goods or services in the marketplace. Therefore, registration will probably be denied.
|Trademark||Description of goods/services|
|EXTRA FAST||Computer hardware – Central processing unit (CPU)|
Registration would most probably be refused, as this would allow only one trader to refer to his products as EXTRA FAST. Other traders should be able to use such descriptive terms when advertising or offering similar products.
However, depending on local laws and practice, trademarks may include descriptive elements as long as they are accompanied by other predominant central elements that grant it distinctiveness.
Furthermore, if your trademark consists of a descriptive element and you have been using it for a considerable period of time, your brand may have acquired the necessary distinctiveness through real and effective use.
Before filing a trademark, it is recommended to seek an expert’s recommendation on whether or not a trademark may in fact be registered. You may do so by using our trademark search service.
One must be able to differentiate a trademark’s goods or services from those of other traders that may offer identical goods or services.
If a trademark consists solely of the name of a product or service, or a name with which a product or service is referred to in the marketplace, it is highly likely that the registration office will refuse it.
However, depending on local laws or practice, trademarks may include the name of a product or service as long as it is accompanied by other predominant central elements. These should not contain a name by which the products or services are known, should not describe the products or services, and one should be able to differentiate the brand when compared with other previously filed or registered trademarks.
In some jurisdictions the elements of a trademark that consist of the name of a product or service (or other common words) will have to be disclaimed.
A trademark search is a search done in the database of the Trademark Office for a specific country or jurisdiction in order to check if the trademark complies with the absolute grounds for registrability, and to find any identical or remarkably similar trademark that may represent an obstacle to the registration of the trademark, in the same or related class of goods/services.
It is highly recommendable to order a trademark search before making a trademark application, because in doing so an IP attorney will check every aspect of your trademark and make a thorough phonetic search of any identical or very similar trademark, including the design features when the database allows it, in order to give the client, the best recommendation regarding any changes that need to be made before applying for registration of the trademark.
Moreover, the trademark search will contain a list of all the similar trademarks that have been found and the correspondent opinion of the attorney regarding the probabilities of a successful registration. The attorney will also check that the trademark complies with the absolute grounds for registrability, which establish that the trademark must have enough distinctiveness and should not have a descriptive character or indicate the nature or origin of the goods and/or services protected, nor contain any word that is forbidden in this jurisdiction.
While in most cases a separate trademark search report will need to be conducted for each country in which the registration is sought, in the case of EU countries a European Union trademark search report can be ordered, giving information about trademarks registered or filed in any of the member countries.