Home – New Forums Marketing mastery US Trademarks – Valid in Australia???

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  • #978366
    marketingweb
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    Hi All,

    Hoping some law gurus (hi Victor!) can help me out with this question!

    SHORT VERSION: If something is a trademark in the USA, but is a very generic sounding name (more like a product descriptor), and is not trademarked in Australia, does this trademark apply internationally? Can I use this same name in Australia (for the same product) without getting into trouble? Do I then need to trademark the name myself?

    LONG VERSION:
    A (small) business I’m doing some consulting work for has identified a particular product that they wish to import and market. It’s a very new and very exciting concept that is starting to become popular in the USA and Europe but hasn’t really taken off here yet. Product sourcing side (China direct) is sorted out.

    Anyway, there is a particular “two word” common name for these things, that is basically a generic descriptor, but could easily become a trademark.

    Lets say they for example were called “cotton widgets”.
    In this fictitious example, the website cottonwidgets.com is taken, and operated by a business in the USA who sells the exact same type of product. I do not know if it is trademarked.

    Other websites are selling the product also with the description “cotton widgets”, but I have no idea if they are buying through this company (ie it’s a brand name) or if the term is being used as a generic term for the product type (which I suspect).

    ANYWAY “cottonwidget.com.au” and “cottonwidgets.com.au” have not be registered, there is no business operating under that name in Australia, and no trademarks. Can I safely register these names and sell this product?

    NOW lets say that everyone calls these things “cotton widgets” but they aren’t actually made of cotton but some form polyester, does this affect things re a claim it’s a “generic name” (leaving aside any legal deception type issues – it’s just an example and this wouldn’t apply in the real case).

    Sorry for such a long question, hoping someone can help.

    Matt

    #1106606
    MyGreatIdea
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    Short answer is you need to get a search to see if they’ve registered a trademark in:

    1. The US
    2. Australia (as a business based here), or
    3. covering Australia through an international trademark application.

    Wendy :)

    #1106607
    marketingweb
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    Couple It, post: 118269 wrote:
    Short answer is you need to get a search to see if they’ve registered a trademark in:

    1. The US
    2. Australia (as a business based here), or
    3. covering Australia through an international trademark application.

    Wendy :)

    Thanks Wendy.
    I don’t know if 1 exists. 2 definitely does not. And I am hoping 3 doesn’t either.

    If it’s registered no-where i’m obviously fine. BUT if in the USA only – what would be the go?

    How does one check international trademark applications? Are all USA trademarks international?

    Also, does the fact it’s a combination of two generic descriptive words (eg like “cotton widgets” in my example) make a difference, say compared to a “made up word” as a brand name (eg like nike or google)?

    Matt

    #1106608
    MyGreatIdea
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    If it’s registered no-where i’m obviously fine.

    Yes, but that would indicate (not necessarily definitely) that the name is too generic to trademark, especially since you say they are selling in the US and Europe already.

    BUT if in the USA only – what would be the go?

    Talk with Jacqui Prior about an Australian trademark

    How does one check international trademark applications?

    Talk with Jacqui – she offers this service

    Are all USA trademarks international?

    No. A trademark is lodged in the country of business. A separate application has to be lodge for an international trademark.

    Also, does the fact it’s a combination of two generic descriptive words (eg like “cotton widgets” in my example) make a difference, say compared to a “made up word” as a brand name (eg like nike or google)?

    In so far as you cannot trademark generic descriptive words, yes.

    Matt, I only have a limited knowledge, and most of it came from Jacqui who’s been working with me over the past couple of weeks. Her service is outstanding, communication excellent, and pricing reasonable.

    I’d suggest you contact her and make sure all your ducks are lined up :D

    Wendy :)

    #1106609
    marketingweb
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    Thanks, your advice is much appreciated.

    I will speak with my client and suggest they need some professional advice as you have recommended – which I suspected they would anyway.

    As strange as it sounds we aren’t too worried if it’s too generic to trademark – in fact i’m quite happy if it is. We have some quite different marketing channels/strategies in mind compared to what most would think of which is our tactic rather than establishing a trademark.

    So not looking into this issue to stop competitors, just to make sure we aren’t infringing on anyone elses IP.

    Matt

    #1106610
    victorng
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    marketingweb, post: 118279 wrote:
    So not looking into this issue to stop competitors, just to make sure we aren’t infringing on anyone else’s IP.

    Hey Matt – having a registered trade mark is an absolute defence against an infringement claim. So a registration has a defensive element as well – it’s not just about stopping others from using a similar mark.

    Replied to your email btw :)

    #1106611
    JacquiPryor
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    So it seems that whilst I am sleeping, Wendy does my work for me… ahh, I am truly living the life ;)

    I won’t go on for too long in reply, as I imagine your emails with Victor have covered most… the only thing I wanted to add/draw attention to in case the two of you haven’t discussed:

    If it’s registered no-where i’m obviously fine.

    If it’s not registered anywhere this is not a guarantee that you are fine – chances are, yes, you will be ok if it’s not registered in US, here or elsewhere – especially if it is a fairly generic or commonly used term but probably is not the same as definitely. Different countries have different laws that can help protect the goodwill or reputation in an unregistered ‘trademark’, so, a user of a ‘brand’ could still have avenues if they felt what you were doing was too similar, even if they don’t have trademark registration in place.

    So – this leads to a ‘ditto’ on Victor’s comment – your client registering their trademarks gives them the right to use whatever they register; one registered owner can’t take infringement action against another.

    If I can be of any assistance, let me know. Otherwise, will leave you in Victor’s capable hands :)

    #1106612
    Burgo
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    I am working with a company at present which has an international trade mark.

    I know it is registered in the UK but I have no idea if it is registered in the US or Australia, but I have been led to believe the trade mark registration in the UK applies world wide

    #1106613
    victorng
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    Burgo, post: 118294 wrote:
    I am working with a company at present which has an international trade mark.

    I know it is registered in the UK but I have no idea if it is registered in the US or Australia, but I have been led to believe the trade mark registration in the UK applies world wide

    No it doesn’t. Trade marks are regulated on a country by country basis, even international marks filed via the Madrid Protocol. In order to have a worldwide trade mark you need to obtain registration in every single country.

    #1106614
    JacquiPryor
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    And, to find out if it’s registered in multiple countries – you would need to check each country’s individual database… if you find the Madrid “application” database, this will only search for applications filed through the Madrid Agreement or Madrid Protocol (which are called “international registration”)- it doesn’t check each country separately.

    So – Burgo, the company you work with may have filed through the Madrid Protocol, giving them an ‘international registration’ but they would still need to designate which particular countries that they are filing into – each country then examines the mark before it can be protected in that country. It’s just a simpler way to file for multiple countries at the one time.

    If it’s of particular interest to you – feel free to send me a PM with the mark name and I can check out the “international registration” database for you and let you know if/what they have protected through there.

    #1106615
    marketingweb
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    Thankyou to everyone who has contributed to this thread, all very helpful and throught provoking advice that has made things a lot clearer for me.

    Especially thankyou Jackie for your advice, it’s very much appreciated. If I go down the path of professional advice it will be with Victor, but only because I already know him a bit and i’m also a long time reader of his blog, so please don’t be offended if I don’t use your service.

    We are very fortunate to have not one but two very knowledgable people people in this complex area who are both so generous with their time, so again thankyou both as well as to everyone else who has contributed.

    Matt

    #1106616
    JacquiPryor
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    Hi Matt, no offense taken at all! Victor and I speak quite a bit and hey, if you’re not going to use my services then I am pleased it’s because you’re going to use his! All the best with it :)

    #1106617
    Kennethti
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    What did I miss?

    #1106618
    victorng
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    Kennethti, post: 118454 wrote:
    What did I miss?

    Jacqui and I are in furious competition. If you want in you have to arm wrestle her first.

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