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LexOrbis opens offices in Mumbai
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Tools of the trademark
TM Cloud’s Practice Guide is the latest addition to a system that can help brands achieve robust protection in a world reliant on brand power
Apple and Google, with estimated brand values of $1.78 billion and $1.33 billion respectively, call the US home. Of course, with brands of such value to protect, the US has to have an efficient and robust trademark system in place to ensure their continuity. Applicants would agree that it does. A meteoric rise in US trademark applications between 1995 and 2015, from 175,307 to 503,889, underlines the importance of brands to both the world’s largest economy and their owners.

But brands looking to carve out their own slice of this sizeable economy need to know the trademark landscape in order to properly protect their rights. As Lanning Bryer, Scott Lebson and Matthew Asbell point out when discussing preliminary searches in Intellectual Property Strategies for the 21st Century Corporation: A Shift in Strategic and Financial Management: “Each trademark registry has its own search formats and protocols, and considering the results are limited to the respective territories, this process can be time-consuming and require a significant amount of care to produce accurate results.”

These issues are intensified when the sophistication of the trademark is greater. Filers of non-traditional trademarks, for example, may be hindered by their own in-house systems when looking to file in the US, according to Lucinda Stevenson, CEO of US-based TM Cloud.

She says: “Filing marks containing graphical elements and keeping records of them in management and docketing systems such as TM Cloud is no longer a problem, although many of the legacy systems still in use do not handle graphics and images well, if at all.”

“The legal profession in general is very conservative and many firms are missing out by continuing to use outdated software systems that can’t support trademark evolution.”

Bryer, Lebson and Asbell went on to describe how vendors can help with would-be brands. They wrote: “In recent years, many of the vendors providing comprehensive searches have also developed online interfaces that enable preliminary searching in numerous jurisdictions simultaneously. Some offer these services free-of-charge, while others charge on a per-record or a subscription basis.”

Vendors have taken their innovations further. TM Cloud offers a practice guide that is included in its robust trademark and IP management system. For example, if a brand uses the TM Cloud Pre-Search module, which provides free preliminary searches in over 100 jurisdictions, it can also call up the Practice Guide for each jurisdiction to survey the lay of the land.

Stevenson explains: “The TM Cloud Trademark Practice Guide provides basic trademark information for filing applications and renewing registrations for every jurisdiction where you can register trademarks. It also provides information on the classification system used in a jurisdiction, whether multi-class applications are possible, whether service marks are registrable, and details of registration, renewal terms and other critical deadlines. The guide index provides additional information on Madrid Protocol membership and international registration refusal.”

She adds: “The jurisdiction field in each module provides a direct link to the guide section for that jurisdiction. Integration to each trademark office is also provided for additional research, and World IP Organization references are also widely used. There is also a link directly next to the docket, where all the dates are calculated, that takes our clients to the practice guide.”

Sticking with the non-traditional trademark example, a practice guide user would learn that the US Trademark Electronic Application System (TEAS) accommodates the filing of sound and motion marks, and allows the direct filing of sound and multimedia specimens and evidence. The commonly used file formats, .wav, .wmv, .wma, .mp3 and .mpg, are accepted, and assistance is offered by the TEAS support team. While not as common of a format, the process is essentially the same so should not be an issue for trademark attorneys and law firms.

TM Cloud’s practice guides are also continuously updated, with innovations being delivered to aid brands in all areas of their trademark work. TM Cloud has recently released a module and workflow for assignments, says Stevenson.

“Larger law firms and corporations are in need of a simple workflow tool for assignments. The TM Cloud Assignments Module provides documents for trademark transfers and recordals worldwide, cutting down the time needed for what used to be a lengthy task.”

Few markets offer the potential for fully realised brand power than the US, where they can also enjoy strong protection. The trick is for those brands to have the right tools in place to ensure that their protection is as robust as possible. The guiding hand of a vendor could be just what those brands need to guarantee that is the case.

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