Brand is an integral part of any start-up, project, or product.
If you believe in the success of your business and brand recognition, you should think about who else believes in it and is waiting for an opportunity to use your achievements for their own benefit. For example, this may happen if someone decides to “accidentally” name their own project very similar to the one you have already promoted.
Intellectual property security is the foundation that really pays off.
You can send all your requests by email: a@legalitgroup.com
Why register your trademark?
The presence of a registered TM in the relevant class automatically satisfies the threshold requirement for initiating a UDRP dispute and blocking similar website names.
A registered trademark increases investors’ confidence that a business or start-up is created not only to receive investment, but that the owner has a clear goal to develop and scale, increasing the brand’s value and, accordingly, the market value of the project.
If you are a mobile application or game developer, having a registered TM protects the app from being blocked for violation of intellectual property rights in the App Store and Google Play. TM also allows blocking other developers’ apps that copy your name/logo.
Реєстрація дозволяє безпечно передавати/надавати права на використання ТМ за ліцензійним договором (наприклад, для створення мерчу/колаборації між брендами, що часто зустрічається у сфері GameDev). У разі продажу бізнесу права на зареєстровану ТМ теж передаються і це збільшує вартість угоди. Якщо мова йде про офлайн бізнес – для договору франчайзингу обов’язково потрібен зареєстрований бренд.
The rights to a registered (filed for registration) TM allow you to monitor conflicts and file oppositions to prevent the registration of similar TMs of competitors; block the pages of fraudsters and other imitators on social networks, such as Instagram; protect the brand in a more formal way, including in court.
It is worthwhile to spend money on marketing campaigns after the registration of the TM, since “promoted” and unprotected brands are the tasty morsel for attackers who can copy them with impunity.
Having no registered TM significantly increases the risks that you violate the rights of other owners and that your own TM rights will be violated, even if unintentionally.
You can use the registration mark ® to inform the public that your TM is registered.
The TM can be active and can fulfill all the specified functions as long as the owners renew it (every 10 years).
A registered TM helps to increase the trust of customers and partners and raise the level of business reliability, indicating the brand owner’s attitude to its reputation and assets.
Why is it crucial to register a trademark right now?
The sooner you evaluate the intellectual property market to find available TMs and potential conflicts of your brand and take care of this valuable asset, the greater service you will do for your business.
At Legal IT Group, we recommend including TM registration in the top 5 priorities for developing your business, which, in addition to legal guarantees, has other non-obvious advantages.
Let's discuss some examples
The nutritional application got first million subscribers but was “knocked out” or banned from the store following a complaint by its competitor with a very similar name, which registered a trademark in the USA.
As part of the international arbitration on the UDRP, a complaint was filed against a content creation services site by its competitor with a practically identical name, which has just registered a trademark and immediately rushed into battle. At the same time, the defendant’s company has its own trademarks in several jurisdictions and is already known on the market. The company has something to defend itself with.
Sometimes it happens that as part of the trademark registration process, an examining registrar issues an office action and points on some issues to be overcome to proceed with registration (e.g. additional explanations/amendments to the application are needed). After the response is sent and appropriate amendments are done, the trademark will be registered successfully. It is also a possible situation when oppositions to trademark registration are filed by competitors who believe that its registration will lead to a violation of their rights.
In this case, a competent legal position set out in the relevant procedural document can also help.
An individual, by contacting specialists, developed a mobile application and sent it for sale in the App Store. After 2 years, the application was blocked and its sale was stopped due to a complaint from another person who claimed to be the author of the application.
The plaintiff (the owner of the app) decided to register its copyright in the app. However, it became known that the person who had filed the complaint had shortly before registered the copyright to the application. Later, an expert examination will determine that the issuance of a certificate of registration of the work and the right to the program code of the application to that person constitutes an infringement of the plaintiff’s copyright and related rights.
Probably the most famous conflict to pay attention to is the 2020 case between Epic Games and Apple.
The reason for the lawsuit against Apple was the removal of Fortnite from the App Store. The reason was that Epic Games accepted payments bypassing the official payment system and the 30% commission set by Apple. The claim to Apple was to allow all developers to direct users to third-party payment platforms.
According to Epic Games, the reason for Apple’s restrictions is an attempt to maintain a monopoly (which Apple itself artificially created) in the field of payments related to iOS mobile applications.
In September 2021, the court refused to recognize Apple as a monopolist and sided with it on all but one issue. Apple can no longer prohibit third-party developers from telling about alternative payment methods bypassing the App Store.
This decision did not leave either party satisfied. Both Apple and Epic Games appealed the decision in the United States.
Kidslox, a Ukrainian developer of a parental control app, filed a lawsuit against Apple.
Apple had started removing applications (including Kidslox) from the App Store that allowed people to limit the time they used their mobile devices. The reason for such actions is that such apps jeopardize the privacy and security of users.
Kidslox teamed up with similar companies and together they proposed the creation of an API (application programming interface). The API, in their opinion, would solve the problem and allow them to use Apple’s technology to track screen time without interfering with privacy.
Eventually, Apple went along with Kidslox and other parental control apps and changed the rules for reviewing apps in the App Store.
However, The New York Times commented on Apple’s position that “this is a competition issue, not a security one” because such services are a threat to Apple’s business, namely the sale of iPhones, which should be in use as long as possible.
Why choose us?
We have successfully registered dozens of trademarks, many of them in the US and the EU.
We analyse the real picture of your chances and do not persuade you to register knowingly losing TMs; we assess in detail the chances of registering your TM, including analysing similar practical cases, and, if necessary, provide recommendations to increase the chances of TM registration before submitting an application.
We have established partnerships with colleagues in popular and sought-after jurisdictions, so you don’t have to worry about finding local representatives to submit an application (which is a legal requirement).
We apply an individual approach – each trademark requires its own approaches to finding conflicts, selecting the right wording for describing the product or service and steps in the registration process, and we choose the strategy that suits the client in each case.
We have a transparent and favorable pricing policy for our clients.
We choose communication channels that are convenient for you, inform you about the current status of the application and are ready to answer questions at all stages.
Our services
Applying for trademark registration
- Relevant class selection, consulting on the chances of the successful registration
- Submission of an application for trademark registration in the following jurisdictions:
- the USA,
- the EU,
- Canada,
- China,
- Australia,
- the UK,
- Ukraine.
Consulting and preparation of procedural documents regarding TM
- Support in office action overcoming
- Legal support regarding a trademark sale/transfer
- Consulting on trademark-related issues
- Filing an objection for trademark registration
Legal support in trademark disputes
- Legal assistance in domain disputes in national courts and arbitration
- Trademark disputes consulting
- Legal assistance at the pre-trial/trial stage in trademark disputes
In which jurisdiction you need a trademark?
Trademark registration experts
"OK, I’m convinced. How do I reach you?"
Send us an email at a@legalitgroup.com or book an online call with our specialist.
We provide a full range of services for trademark registration: from consulting on a preliminary assessment of the chances to happy notifications of receipt of a certificate.
We will be happy to help protect your brand!