Category: Trade Marking

TradeMark - Updated

11/3/2020

I've received the odd enquiry about how my TM went and did it finalise?

It did, actually.

On 20th October I received an official note from IP Australia (the governing body for Trade Marks, Patents etc in Australia) and went into the system to find out what the result was.

But let me backtrack slightly.

After I wrote the post in April 2020 I had to wait for the opposition period. On August 11th I received the following letter...

On 11th August the trademark went into opposition. That means this is the 2 month window where someone can object to the trademark.
So I waited and found the journal (you can find it and search it online)
Pro Tip: The actual listing goes live on the 12 at 12.01am) and closes at 11.59pm on 11th but shows on the 11th October.
Now, just in case there was an objection, I had prepared documentation to prove I use the trademarked term on a daily basis and have done so for 10 years. I also outlined that I will continue to use it. (This is really important if you do face an opposition.) But pleasantly (and as I was advised was likely) I didn't face an opposition to my trademark.
So you get through the period (and trust me I checked weekly to see that no one did oppose it - not that I expected it, but given the world of authors at the moment, nothing is sure.
Then you have to wait. And wait some more.
On the 20th October I received this:

My next step (now that I have it ready to go on my wall) is to amass the funds to go with the Madrid Protocol (which means I can register it internationally.) With the US this circumvents the need for a US attorney.

Trade Marking is not a simple process. It takes planning, time and patience (which I don't really have a lot of) but in the end I succeeded even after being told authors can't TM thie pen names in Australia (patently bad advice I found out once I started the process.)

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My Trade Mark. My story.

4/27/2020

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I have been discussing my thoughts on Trade Marking for Australian Authors lately, and thought it might be worth telling my story. What I did. How I did it and why.

Disclaimer: This is my experience. In no way should this be construed as professional advice.

Over the last little while, I've been intensley aware of the emerging issues in the publishing world. I've watched names get closer to my pen name and worried. When I lost my url (www.imogenenix.com) to cyber squatters I started researching how best to gain it back. One thing that came to mind was making it impossible for anyone else to use it.

Over time, I've chiselled away and not so long ago, I finally regained control of the URL. Great and happy times ensued but the burning need to prevent something like this happening again spurred me to ensure I did something tangible to protect my brand.

Yes, I have Imogene Nix registered as a business and tied my ABN to it, but more was needed. The truth is, I needed to Trade Mark it to protect myself.

Now, I'd be really surprised to learn people haven't come across this symbol before, but what exactly does it mean?

A trademark is a type of intellectual property consisting of a recognized sign, design or expression which identfies products or services of a particular source from those of others, although trademarks used to identify services are usually called service marks.

Source: Wikipedia

Okay, so what is the benefit of a Trade Mark (in the Australian context)?

A registered trade mark provides you with exclusive rights to use, license and sell the mark. It’s also a valuable marketing tool because the value of your trade mark increases with the success of your business.

Source IPAustralia

With this information to hand, I considered whether to go straight to the USPTO (United States Patent & TradeMark Office) however there is a tiny hitch.

Trademark rule requires foreign-domiciled applicants and registrants to have a U.S.-licensed attorney

Foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings, including Canadian trademark filers, must appoint and be represented before the United States Patent and Trademark Office (USPTO) by an attorney who is licensed to practice law in the United States. See more about foreign-domiciled trademark applicants, registrants, and parties.

Source USPTO

In short, I'd need a US Attorney to file a TradeMark in the USA. Not quite the way I see as being positive for me.

However, there is another way. It's involved. It's costly (but hey, the whole thing is!) but I can do it without needing a US attorney.

On March 10th I filed for a Trade Mark. The up front cost (as I chose to go HeadStart was $200) however, it got my file in front of an assessor earlier. What this meant is someone checked my original application before it went into the pile.

While the original assessment sailed through, what happened after that was cause for concern... But because I'd had the opportunity to talk to someone prior to the application moving onto the amended application format, I knew the questions to ask and who to ask.

On the 24th March, I spoke to the assessor who passed the initial application and paid the further fee of $150. It went back into the pile. On the 25th March an Adverse Report was sent to me.

I rang the examiner and spoke to him, querying the reason for this. He told me that as a "Famous Person" was named Imogene Nix, it couldn't proceed. When I explained that Imogene Nix was me (yes, I queried that he meant the author) he asked me to send a Statutory Declaration stating this.

I did so and the file moved on.

On the 8th April my application was marked as Accepted and on 9th April I received my notice of Early Acceptance. So it met all the conditions.

From this point on, it's a waiting game. In August it moves into Opposition mode. That's when people can object. Once it goes through the 2 month system, in October I should receive the official certificate.

Yay.

Okay, so what does this have to do with the USA and so on?

Well, see, one you have your TM locked down, you can make application through the Madrid Protocol. What this is, is an international body that recognises foreign TM's.

So, by having an Australian TM I can make application that my TM be acepted and endorsed in the USA (and any other signatory country).

The drawback for me, is as I want to apply in 2 countries (though only with one class) the cost is in the region of $1500. The price is determined in Swiss Francs then you need to do a conversion. I will do this probably at the beginning of next year, once my account is once more flush with funds :D

Now, as I said at the beginning of this blog... I am not an expert. So, to get the most up to date information and to find out costs, processes etc I would strongly recommend doing some reading. Below I'm posting links on the basics of TM. The Process and The Madrid Protocol. Oh yes, and the differences between Trade Marking and Registering a Business Name.

Trade Marking isn't for everyone, but for those who want to protect their brand (and I have been working at this one for nearly 10 years) this is an effective way to keep your brand yours.

If you decide to go down this route, then good luck. It takes time, patience and some $$ but it's well worth the effort!