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How to protect your trademark in the United States ?

nathalie dreyfus Written by Nathalie Dreyfus04/02/2025

The United States is a key market for many businesses. Registering a trademark in this country helps secure your brand identity and avoid legal disputes related to unauthorized use of your distinctive sign. However, the U.S. trademark registration process differs from that in Europe and other jurisdictions. This guide outlines the filing options, registration process, and associated costs.

Why Register a Trademark in the United States?

A registered trademark in the U.S. provides several benefits:

  • Legal Protection: Prevents third parties from using an identical or similar sign in a commercial context.
  • Exclusive Usage Rights: Registration grants a monopoly over the trademark for the designated goods/services.
  • Increased Commercial Value: A registered trademark can be sold, licensed, or used as an asset in investments.
  • Simplified Legal Recourse: In case of infringement, the trademark owner can take legal action in federal courts.

Different Bases for Filing a U.S. Trademark

In the United States, the legal basis for a trademark application refers to the foundation on which the filing is made. Unlike in some jurisdictions, the United States Patent and Trademark Office (USPTO) generally requires proof of use before granting full registration. The choice of filing basis depends on the applicant’s business strategy, the current use of the mark, and any existing international trademark portfolio.

Application Based on Actual Use in Commerce (§1(a))

This option applies to businesses that are already using the trademark in the United States at the time of filing. The applicant must submit a specimen of use demonstrating that the mark is actively used in commerce in connection with the claimed goods or services. Acceptable specimens include packaging, labels, website screenshots, advertisements, or invoices that clearly display the trademark in a commercial context. The applicant must also provide the first use date (when the mark was first used anywhere) and the first use in commerce date (when it was first used in a way that affects interstate or international commerce in the U.S.).

One of the main advantages of this basis is that it allows for a faster path to registration since no further proof of use is required later in the process. However, the applicant must maintain continuous use of the mark to avoid cancellation for non-use.

Application Based on Intent to Use (§1(b))

This option is available for businesses that have a bona fide intent to use the trademark in the United States but have not yet started using it at the time of filing. After the USPTO examines and approves the application, a Notice of Allowance (NOA) is issued. From that point, the applicant has six months to provide proof of actual use by submitting a Statement of Use. If the applicant is not ready to prove use, they can request up to five six-month extensions, subject to additional fees.

This basis allows applicants to secure an earlier filing date while preparing for market entry in the U.S. However, the trademark will not be registered until actual use is demonstrated.

Application Based on a Foreign Registration (§44(e))

This option is available to businesses that already hold a registered trademark in their country of origin. Unlike the previous bases, the USPTO does not require immediate proof of use in the United States. However, the applicant must submit a copy of the foreign registration, which must remain valid.

One key advantage of this basis is that it allows an applicant to register a trademark in the U.S. without proving use initially. However, after five years of registration, the applicant must submit a declaration of use to maintain the trademark and avoid cancellation.

Application Based on a Foreign Application (§44(d))

If an applicant has filed a trademark application in another country within the past six months, they may claim priority rights in the United States. This allows them to benefit from the earlier foreign filing date for their U.S. application.

No proof of use is required before the fifth year of registration. However, to finalize the registration process, the applicant must submit a copy of the foreign registration certificate. This option is particularly advantageous for businesses looking to secure U.S. trademark rights while relying on an international application.

The choice of filing basis depends on the applicant’s strategic objectives and readiness to use the mark in U.S. commerce.

The U.S. Trademark Registration Process

Registering a trademark with the USPTO involves several key steps:

Step 1: Trademark Search

Before filing, it is highly recommended to conduct an availability search to ensure that no similar or identical trademark already exists. This search can be performed via the USPTO’s TESS database or by consulting a trademark attorney.

Step 2: Choosing the Filing Method

The USPTO offers two options for filing a trademark application:

  • TEAS Plus: Lower cost but requires strict compliance with the USPTO’s Goods & Services Manual.
  • TEAS Standard: More flexibility in product/service descriptions, but with higher fees.

Step 3: Examination by the USPTO

Once the application is submitted, a USPTO examiner reviews it and may:

  • Approve it directly.
  • Request additional details through an Office Action (e.g., clarification of descriptions, proof of distinctiveness).
  • Reject it if it is too similar to an existing trademark or considered descriptive.

Step 4: Publication in the Official Gazette

If the application is accepted, the trademark is published in the Trademark Official Gazette. Any third party who believes the trademark may harm their interests has 30 days to file an opposition.

Step 5: Registration or Notice of Allowance

  • If the trademark is already in use, a registration certificate is issued.
  • If the application was based on intent to use, the USPTO issues a Notice of Allowance, and the applicant must submit proof of use within six months (with the possibility of extensions).

Trademark Filing Costs in the U.S.

The cost of filing depends on several factors, including the number of classes and the filing method chosen.

Filing Method First Class Additional Class
TEAS Plus $665 $455
TEAS Standard $765 $555

Additional Fees:

  • Declaration of First Use: $350 for the first class, $250 per additional class.
  • Six-month extension to submit proof of use: $350 for the first class, $250 per additional class.

Choosing the Right Trademark Type

Word Mark

Protects only the name, regardless of font or logo.

Offers broader protection since it covers all typographical variations.

Logo Mark

Protects only the design of the logo, not the name.

Useful if the visual identity is crucial to the brand.

Combined Mark (Name + Logo)

Protects both the name and design, but with limited flexibility if changes are made later.

Recommended if the brand identity is strongly tied to a specific visual representation.

Trademark Renewal and Maintenance

Once registered, a trademark must be maintained to remain valid:

  • Between the 5th and 6th year: A Declaration of Use (Section 8) must be filed.
  • Between the 9th and 10th year: A Declaration of Use and Renewal (Sections 8 and 9) must be filed.
  • Every 10 years: The trademark must be renewed to retain protection.

Failure to meet these requirements may result in cancellation by the USPTO.

Handling Oppositions and Disputes

If a third party contests the trademark after publication, an opposition can be filed before the Trademark Trial and Appeal Board (TTAB). In case of a refusal or objection from the USPTO:

  • The applicant can modify the application and respond to the Office Action.
  • If the issue persists, a trademark attorney may be necessary to defend the registration.

Conclusion

Registering a trademark in the United States is a crucial step to protect your business identity. Choosing the right filing basis, anticipating costs and timelines, and proactively managing legal obligations will help ensure optimal protection for your brand in the U.S. market.

Dreyfus Law Firm supports clients throughout the entire trademark registration and protection process in the United States. Our intellectual property experts conduct availability searches, handle all USPTO filing procedures, and provide tailored assistance for renewal and enforcement. Through our global network of IP-specialized attorneys, we ensure effective protection of your trademarks both in the U.S. and internationally.

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FAQ

How do I register a trademark in the United States?

Trademark registration is done online through the USPTO (United States Patent and Trademark Office) using the TEAS (Trademark Electronic Application System). You must choose a filing basis (actual use, intent to use, or foreign registration), complete the application form, and pay the required fees.

How much does it cost to register a trademark?

TEAS Plus: $665 for the first class, $455 for each additional class.

TEAS Standard: $765 for the first class, $555 for each additional class.
Additional fees may apply for proof of use or extensions.

How can I register a trademark internationally?

You can register a trademark internationally through the Madrid System with WIPO (World Intellectual Property Organization) or by filing directly in each target country. A U.S. registration can serve as a priority basis for international filings.

What are the requirements for trademark registration?

A trademark must be distinctive, available, and associated with specific goods or services. Proof of use is required unless filing under a foreign registration basis.

How long does it take to register a trademark?

On average, 12 to 18 months, depending on examination timelines, possible objections, and proof of use requirements.

Do I need to prove use of my trademark?

Yes, except when filing based on a foreign registration. Proof of use is required to finalize the registration and must be submitted between the 5th and 6th year after registration, and every 10 years thereafter.

How long does a U.S. trademark last?

A U.S. trademark is valid indefinitely, provided it is renewed and proof of use is submitted every 10 years.

Can I protect a logo and a name separately?

Yes. A word mark protects the name alone, while a logo mark protects the visual design. A combined mark covers both but offers more limited flexibility if changes are made later.

What happens if my trademark is challenged?

After publication, third parties have 30 days to file an opposition. If opposed, you must either negotiate or defend your case before the Trademark Trial and Appeal Board (TTAB).

What happens if I don’t renew my trademark?

If you fail to submit the required renewal or proof of use, the USPTO cancels the trademark, making it available for new registration.

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Understanding the European Union trademark (EUTM)

nathalie dreyfus Written by Nathalie Dreyfus03/02/2025

Navigating the world of trademarks can be complex, especially when it comes to the European Union Trade Mark (EUTM).
This system offers a unique opportunity: it allows businesses to protect their brand across all EU member states with a single application.

But what does the process involve? How does it differ from national trademarks?
This article provides a comprehensive guide to the EUTM, covering the application process, benefits, and legal considerations.

Whether you’re a business owner, a legal professional, or just curious, keep reading. Let’s explore the world of the European Union Trade Mark.

What is the European Union Trade Mark (EUTM)?

The European Union Trade Mark (EUTM) is a crucial asset for businesses. It is a unified trademark system that grants protection across all EU member states with just one application.

Managed by the European Union Intellectual Property Office (EUIPO), the EUTM offers a cost-effective and streamlined registration process. This is particularly beneficial for businesses looking to expand their market reach across Europe.

A key feature of the EUTM is its uniformity:

  • One trademark = protection in all EU countries
  • The same rights and legal standing apply in every member state

Who can register an EUTM?

To qualify, a trademark must be distinctive—it must clearly distinguish goods or services from those of competitors.

  • Generic or purely descriptive names cannot be registered
  • The trademark can be a word, logo, shape, color, sound, or even a combination of these elements

In short, the EUTM is a powerful tool for businesses seeking to protect their brand across the European Union.

Benefits of Registering a European Union Trade Mark (EUTM)

Registering an EUTM comes with significant advantages, especially for businesses operating across multiple EU countries.

Key benefits:

  • Single registration = protection in all EU member states
  • Cost-effective: One application is cheaper than multiple national filings
  • Simplified administration: Manage your trademark centrally via EUIPO
  • Stronger brand protection: Enforce rights across all EU countries
  • 10-year protection, renewable indefinitely

Industry-specific advantages:

  • Fashion & luxury goods: Protects against counterfeit sales across the EU
  • Tech & software: Secures brand identity in a rapidly evolving market
  • Agriculture & regional products: Helps protect geographical indications (GI) and designations of origin

By securing an EUTM, businesses strengthen their brand presence in one of the world’s largest markets.

How to Apply for an EUTM

The European Union Intellectual Property Office (EUIPO) handles all EUTM applications.

Step-by-step application process:

  1. Conduct a trademark search
    • Use TMview to check for existing trademarks and avoid conflicts
  2. Prepare your application
    • Choose your trademark type (word, logo, etc.)
    • List goods & services using the Nice Classification system
  3. File your application online via EUIPO
    • The basic fee is €850 for one class of goods/services
    • Additional fees apply for extra classes (€50 for the second, €150 for each extra class)
  4. EUIPO examination
    • EUIPO checks if your trademark meets legal requirements (e.g., distinctiveness)
  5. Publication & opposition period
    • Your trademark is published in the EU Trade Marks Bulletin
    • Third parties have three months to file oppositions
  6. Final registration
    • If no opposition is filed, or if opposition is rejected, your trademark is officially registered
    • You receive a registration certificate valid for 10 years

A well-prepared application reduces delays and increases approval chances.

EUTM vs. National Trademarks vs. Madrid System

Feature EUTM National Trademark Madrid System
Coverage All EU countries (27) One country only Multiple countries (incl. non-EU)
Cost-effectiveness One fee for the entire EU Separate fees per country Covers global markets
Enforcement Unified rights across EU Must enforce in each country separately Protection varies by country
Best for… Businesses targeting the entire EU Local businesses Companies expanding worldwide

Which one to choose?

  • If your focus is the EU market, an EUTM is the best option
  • If you only operate in one or two countries, a national trademark might be more practical
  • For international protection, consider using the Madrid System to cover multiple regions

After Registration: Rights & Responsibilities

Once your EUTM is registered, you gain exclusive rights across all EU member states.

Your rights:

  • Use the ® symbol to signal trademark protection
  • Take legal action against infringers anywhere in the EU
  • License or sell your trademark

Your responsibilities:

  • Use it or lose it: If your trademark isn’t used for five consecutive years, it can be revoked
  • Monitor for infringements: Regularly check online & offline markets for unauthorized use
  • Renew every 10 years to maintain protection

Consider using trademark monitoring services to detect infringement early.

The Impact of Brexit on EUTM

Since Brexit (January 1, 2021), EUTMs no longer cover the UK.

Key Brexit changes:

  • EUTMs remain valid in the EU (27 countries)
  • Existing EUTMs were automatically converted into UK trademarks
  • New UK trademarks must now be filed separately

If you operate in both the EU and UK, you must manage your trademarks separately.

Common Mistakes & How to Avoid Them

  1. Mistake: Not conducting a trademark search
    Solution: Use TMview to check for conflicts before applying
  2. Mistake: Choosing a generic name
    Solution: Pick a distinctive and non-descriptive brand name
  3. Mistake: Submitting an incomplete application
    Solution: Double-check that all details and classifications are correct
  4. Mistake: Not renewing on time
    Solution: Set reminders for the 10-year renewal deadline

Conclusion: Why a Strategic Approach Matters

Registering an EUTM is a valuable investment for businesses expanding across Europe.

  • It provides strong legal protection
  • It helps build a unified brand identity
  • It simplifies trademark management across 27 countries

By carefully planning your application, avoiding common pitfalls, and actively protecting your trademark, you can ensure long-term brand success in the European market.

Ready to register your EUTM? Start your application today at EUIPO.

Would you like any additional refinements or industry-specific details?

FAQ: European Union Trade Mark (EUTM)

  1. What is the EUTM, and how does it differ from national trademarks?
    The EUTM is a single trademark registration valid across all EU member states. Unlike national trademarks, it offers uniform protection in 27 countries through one application.
  1. How much does it cost to register an EUTM?
    The basic fee is €850 for one class of goods or services. Additional classes cost €50 for the second class and €150 for each subsequent class.
  1. Can I modify my EUTM after registration?
    Yes, but modifications are limited to minor changes that do not alter the trademark’s identity. Adding new goods or services requires a new application.
  1. What happens during the opposition period?
    The opposition period lasts three months after publication. Third parties can challenge the trademark based on prior rights, requiring the applicant to provide evidence to defend their case.
  1. How long does the EUTM registration process take?
    Typically, it takes 4–6 months, provided there are no oppositions or complications.
  1. What rights does the ® symbol grant?
    The ® symbol indicates that your trademark is officially registered. It serves as a deterrent to infringers and enhances your brand’s credibility.
  1. Can an EUTM be revoked?
    Yes, an EUTM can be revoked for non-use over five consecutive years or if it becomes generic or misleading.
  1. How does Brexit affect my EUTM?
    Since Brexit (January 1, 2021), EUTMs no longer cover the UK. Existing EUTMs were automatically converted into comparable UK trademarks.
  1. What should I do if my trademark application is rejected?
    You can file an appeal or amend your application to address the reasons for rejection. Consider legal counsel for complex cases.
  1. How do I enforce my EUTM rights?
    You can take legal action against infringers in any EU member state. Monitoring tools and legal support help detect and address violations effectively.

Protect your trademarks and business reputation with expert legal guidance. Contact Dreyfus Law Firm today for strategic advice on EUTM registration, enforcement, and cancellation actions before the EUIPO. Secure your brand’s future now!

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How to win a cancellation action against a European trademark ?

nathalie dreyfus Written by Nathalie Dreyfus31/01/2025

How to win a cancellation action before the EUIPO?

Protecting trademarks effectively within the European Union requires a deep understanding of the legal mechanisms available to challenge the validity or use of a registered trademark. The invalidity and revocation procedures, collectively referred to as “cancellation proceedings,” before the European Union Intellectual Property Office (EUIPO) provide rights holders and third parties with tools to maintain the integrity of the trademark register.

In 2024, approximately 2,000 cases have been consistently initiated each year since 2021, showing a stable trend with a slight decrease. Meanwhile, revocation proceedings have remained stable at approximately 500 per year since 2021, with a slight upward trend observed.

Introduction to Invalidity and Revocation Procedures

The invalidity and revocation procedures aim to challenge the validity or continued use of a registered European Union trademark (EUTM). Invalidity disputes the trademark’s validity at the time of registration, while revocation addresses the loss of the trademark owner’s rights due to post-registration circumstances.

Invalidity Procedure

A trademark can be declared invalid based on absolute or relative grounds.

Absolute Grounds for Invalidity

A trademark may be invalidated if, at the time of registration, it:

  • Lacked distinctiveness.
  • Was descriptive of the goods or services in question.
  • Contravened public order or morality.
  • Was liable to mislead the public regarding the nature, quality, or geographical origin of the goods or services.

Relative Grounds for Invalidity

A trademark may also be invalidated if it infringes upon prior rights, such as:

  • An earlier identical or similar trademark for identical or similar goods or services, creating a likelihood of confusion.
  • Copyright, design, trade name, or company name rights.

Revocation Procedure

Revocation addresses the improper use or non-use of a trademark following its registration.

Non-use of the Trademark

The owner may lose their rights if the trademark has not been put to genuine use in the European Union for an uninterrupted period of five years without valid reasons.

Becoming a Generic Term

If, due to the owner’s actions or inaction, the trademark has become a generic term in the trade for the goods or services it covers, it may be revoked.

Misleading Character of the Trademark

A trademark may also be revoked if its use by the owner or with their consent has become misleading regarding the nature, quality, or geographical origin of the goods or services.

Procedure Before the EUIPO

Application Filing by Your Representative

To ensure a smooth and effective application process before the EUIPO, it is essential to engage a qualified counsel who can provide strategic advice and represent your interests effectively. While it is not mandatory to appoint a representative to file a cancellation action, parties without a domicile, principal place of business, or an effective and genuine industrial or commercial establishment within the European Economic Area (EEA) must be represented by an authorized representative in EUIPO proceedings. Even for those with a presence in the EEA, appointing a representative ensures the process is handled with the expertise required to maximize efficiency and effectiveness.

Adversarial Phase

Once the application is received, the EUIPO verifies its admissibility. If deemed admissible, an adversarial phase begins, allowing the parties to present arguments and evidence. The EUIPO may also request additional information or clarification from the parties.

Decision and Effects

Following the review of arguments and evidence, the EUIPO issues a decision. If the application is successful, the trademark is either invalidated retroactively or revoked from the date of the decision. These decisions can significantly impact the trademark landscape within the EU.

Appeal Process

Decisions by the EUIPO can be challenged through a well-defined appeal process:

  1. Appeal to an EUIPO Board of Appeal: This must be filed within two months from the date of notification of the decision. A written statement detailing the grounds of appeal is required.
  2. Appeal to the General Court of the European Union: If dissatisfied with the Board of Appeal’s decision, an appeal can be lodged within two months from the notification of that decision. This process examines the legality of the decision but does not re-assess the facts.
  3. Referral to the Court of Justice of the European Union (CJEU): A further appeal on points of law can be made within two months of the General Court’s decision. The CJEU reviews legal errors but does not revisit the case’s substance.

Recent Trends and Emerging Practices

Use of Artificial Intelligence in Trademark Searches

With the increasing reliance on AI tools, many businesses now utilize AI-driven platforms for pre-registration trademark searches. These tools enhance precision and speed in identifying potential conflicts, reducing the likelihood of disputes.

Impact of Blockchain on Trademark Authenticity

Blockchain technology offers a secure and transparent method for proving trademark use. By maintaining immutable records, it ensures authenticity and provides robust evidence in revocation proceedings.

Practical Tips for Success in Cancellation Actions

  1. Conduct Comprehensive Pre-Filing Research: Ensure thorough investigation of potential conflicts or grounds for cancellation using tools like TMview.
  2. Maintain Robust Documentation: Keep detailed records of trademark usage to counter non-use allegations.
  3. Engage Expert Counsel Early: Involve experienced legal professionals to navigate the complexities of EUIPO procedures.
  4. Leverage Evidence Effectively: Present compelling evidence, such as market surveys or sales data, to support your claims or defense.

Strategic Approaches to Cancellation Actions

Proactive Risk Assessment

Before initiating a cancellation action, it is critical to conduct a comprehensive risk assessment. This involves analyzing the targeted trademark’s weaknesses, such as lack of distinctiveness or non-use, and identifying supporting evidence to strengthen your case. Using tools like TMclass and DesignView can streamline this process and ensure a strategic approach.

Collaborating with Regional Experts

Trademark laws and practices can vary subtly between EU member states. Collaborating with local IP experts who understand jurisdictional nuances ensures your cancellation strategy aligns with both EUIPO standards and local regulations.

Tailoring Arguments for Absolute and Relative Grounds

When challenging a trademark based on absolute grounds, highlight legal principles such as descriptiveness or violation of public order. For relative grounds, focus on substantiating prior rights through market research, survey evidence, and sales data.

Case Studies: Lessons from Recent Decisions

Case Study 1: Revocation for Non-Use

In 2023, a tech company successfully revoked a competitor’s trademark on the grounds of non-use. The claimant demonstrated that the trademark owner had not used the mark in commerce for over five years. This case underscores the importance of maintaining detailed records of trademark use.

Case Study 2: Genericization of a Trademark

A recent case involved a prominent food brand losing its trademark due to genericization. The opposing party presented consumer surveys and industry reports showing that the mark had become synonymous with the product category, no longer serving as a source identifier.

Emerging Trends in Trademark Cancellation

AI-Driven Case Analysis

Artificial intelligence tools are being adopted by law firms and businesses to analyze previous EUIPO decisions. These tools can predict potential outcomes and identify the most persuasive arguments, streamlining the preparation process for cancellation proceedings.

Globalization of Trademark Disputes

With the rise of global commerce, trademark disputes increasingly involve cross-border issues. EUIPO decisions are often referenced in cases involving parallel trademarks filed in other jurisdictions, emphasizing the need for a unified global strategy.

Sustainability as a Grounds for Contestation

As sustainability becomes a consumer priority, trademarks misleadingly suggesting eco-friendliness are increasingly being challenged. Leveraging environmental claims can form a compelling basis for cancellation under absolute grounds.

Practical Insights: Preparing Evidence for Success

  1. Collect Robust Documentation

Evidence is crucial in trademark cancellation cases. Compile a comprehensive portfolio that includes:

  • Historical usage records (e.g., invoices, advertising campaigns).
  • Market surveys demonstrating consumer confusion or genericization.
  • Third-party testimonials or affidavits supporting your claims.
  1. Engage Technical Experts

For cases involving complex goods or services, expert opinions can provide critical insights. For example, a technical expert can validate claims about the functionality of a product, supporting arguments for invalidity based on lack of distinctiveness.

  1. Monitor Competitors Proactively

Use trademark monitoring tools to track potential infringements or misuse by competitors. This allows you to initiate cancellation proceedings promptly, protecting your brand equity.

Strengthening the Legal Framework: Recommendations for Businesses

Policy Alignment with Sustainability Goals

Aligning trademark strategies with broader corporate sustainability goals can strengthen the defensibility of trademarks. For example, ensuring that trademarks promoting eco-friendly products are substantiated with solid evidence mitigates the risk of misleading claims.

Adapting to Regulatory Changes

With the EU’s continuous evolution of IP laws, businesses must stay updated on new directives and regulations. Engaging with IP attorneys who monitor these changes can ensure that strategies remain compliant and forward-looking.

Strengthening Evidence Practices

Regularly collect and update documentation related to the use of trademarks, including marketing materials, sales records, and consumer studies. Proactively preparing this data not only strengthens your defense against cancellation actions but also positions you better for asserting your rights in cross-border disputes.

Our Expertise

Handling invalidity and revocation proceedings before the EUIPO demands expertise, precision, and a results-oriented approach. At Dreyfus Law Firm, we specialize in intellectual property law, offering extensive experience in managing cancellation actions and defending trademarks.

Why Choose Dreyfus Law Firm?

  1. Proven Expertise: Our attorneys possess deep knowledge of EUIPO procedures and case law, ensuring robust representation for clients.
  2. Tailored Strategies: We analyze each case individually, crafting solutions that align with our clients’ business objectives and maximize their chances of success.
  3. Cross-Border Capabilities: Our team seamlessly manages cases that span multiple jurisdictions, ensuring a cohesive strategy for global trademark protection.

Comprehensive Services

  • Pre-Filing Analysis: Conducting in-depth assessments of trademarks for invalidity or revocation risks.
  • Preparation and Filing: Drafting detailed and persuasive cancellation applications supported by strong evidence.
  • Effective Advocacy: Representing clients during adversarial proceedings and appeals before the EUIPO and EU courts.

Client Success Stories

  • Revocation for Non-Use: Successfully revoked a dormant competitor’s trademark, allowing our client to expand its brand presence in the EU market.
  • Invalidity on Absolute Grounds: Achieved invalidity of a trademark for being descriptive, ensuring our client’s unique branding was safeguarded against dilution.
  • Defending Against Cancellation: Protected a client’s established trademark by demonstrating genuine use through robust documentation and market evidence.

Commitment to Results

At Dreyfus Law Firm, we are dedicated to providing practical solutions and achieving results that protect our clients’ business interests. Whether filing a cancellation action or defending against one, we deliver unparalleled legal expertise and strategic insight.

Frequently Asked Questions (FAQ)

  1. What is the difference between cancellation and opposition actions?
    Opposition actions occur before a trademark is registered and aim to block the application. Cancellation actions, on the other hand, target trademarks that are already registered.
  2. How long does the cancellation process take at the INPI?
    The average timeline for cancellation actions at the INPI is 6 to 12 months, depending on the complexity of the case and the volume of evidence submitted.
  3. Can I initiate a cancellation action if I am outside France?
    Yes. Non-French entities can initiate cancellation actions, but they must appoint a local representative or authorized attorney to act before the INPI.
  4. What are the costs associated with a cancellation action?
    The INPI charges a fixed administrative fee of €600 for filing a cancellation action. Additional legal fees depend on the complexity of the case and the attorney’s expertise.
  5. Can a cancellation action be appealed?
    Yes. Decisions made by the INPI can be appealed to the Court of Appeal of Paris within one month of notification. Further appeals can be made to the Court of Cassation.
  6. What evidence is required for revocation due to non-use?
    To support a revocation action based on non-use, you must demonstrate:
  • The absence of sales or marketing activities related to the trademark.
  • Lack of trademark visibility in commercial contexts.
  1. How do cancellation actions impact brand reputation?
    While cancellation actions can protect your business, they may also generate publicity. Managing public relations alongside legal strategy is essential.
  1. How do I prove non-use of a trademark?
    To prove non-use, collect evidence such as market analyses, online presence checks, and absence of sales records during the relevant period.
  1. Can I initiate cancellation proceedings outside the EU?
    Yes, parallel actions can be initiated in jurisdictions where the trademark is also registered, provided local laws allow for cancellation based on similar grounds.
  1. What is the success rate for cancellation proceedings at the EUIPO?
    Recent EUIPO data suggests that approximately 40% of invalidity and revocation applications are successful, emphasizing the importance of presenting strong evidence.

Protect your trademarks and business reputation with expert legal guidance. Contact Dreyfus Law Firm today for tailored advice on cancellation actions before the EUIPO. Let us help safeguard your intellectual property rights!

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The International Trademark and the New Members of the Madrid Protocol

Written by sacha.tuillier@dreyfus.fr20/11/2024

The Madrid System, administered by the World Intellectual Property Organization (WIPO), offers businesses a simplified way to protect their trademarks internationally. With the regular addition of new member countries, such as Qatar, in May 2024, the system continues to expand, providing companies with new business opportunities in strategic territories. But how do these new memberships affect the landscape of international trademarks?

The International Trademark and Its Benefits

The Madrid System is based on two international treaties: the Madrid Agreement of 1891 and the Madrid Protocol of 1989. These two instruments allow businesses to file a single international trademark application, designating the countries where they wish to protect their mark.

However, before a company can file such an application, it must first register its mark at the national level in the country where it is established. Following the registration of the international trademark, a dependency link is created with the national mark for a period of five years. Consequently, the loss of rights on the national mark automatically results in the same loss for the international mark in all designated countries.

Through the Madrid System, businesses can benefit from uniform protection of their mark in multiple countries while reducing costs and administrative steps. A single application also simplifies the management of trademark renewals, which are valid for a period of ten years and can be renewed indefinitely.

Qatar’s Accession and Its Implications for International Companies

Qatar became the 115th member of the Madrid Protocol on May 3, 2024, marking a new phase for the Gulf region. It is the fourth country out of six Gulf Cooperation Council (GCC) members to join. This accession allows Qatari companies to register their trademarks internationally through a single procedure while facilitating access to foreign markets. Conversely, foreign businesses can now more easily protect their trademarks in Qatar by designating the country directly in their international trademark application.

For international businesses, the accession of new countries like Qatar to the Madrid Protocol opens up unprecedented commercial opportunities in markets that were previously less accessible. It enables the extension of trademark protection in strategic geographical areas, particularly given the rapid economic growth in the Middle East.

Challenges to Anticipate with New Members

Although the Madrid Protocol offers a centralized filing process, each member country retains its own national trademark laws. This means that even if a trademark is accepted at the international level, it may face challenges in some newly acceded countries. National offices may, for example, reject a trademark based on their specific criteria or extend the processing times, especially in cases of opposition.

Furthermore, companies must be prepared to face opposition in the designated countries. These oppositions may be based on pre-existing rights, leading to prolonged disputes or partial refusals of protection in certain countries. Opposition procedures may vary across jurisdictions, and the timelines can differ significantly.

Conclusion

The ongoing expansion of the Madrid System, with new accessions such as Qatar’s, strengthens the system’s global reach, facilitating access to new business markets. However, these advantages come with legal and administrative challenges, particularly linked to the national specificities of member countries. A proactive risk management approach, particularly regarding oppositions and variations in protection criteria, is essential for companies seeking to optimize their international trademark strategy.

Dreyfus Law Firm provides expert support at every international trademark registration and management stage. Our deep understanding of legal subtleties and our experience in global markets ensure optimal protection tailored to your specific needs.

Dreyfus Law Firm works in close collaboration with a global network of specialized intellectual property lawyers.

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Case Study on Trademark Fraud Allegations in France: Hot Couture’s Pierre Cadault from Netflix Hit Series “Emily in Paris”

Written by Dreyfus18/11/2024

Breaking Down INPI’s Landmark Decision: A Tale of Two Industries

 The French National Institute of Industrial Property (INPI) recently addressed an intriguing trademark dispute that caught the entertainment industry’s attention. The case, involving a character name from the popular Netflix series “Emily in Paris,” has illuminated crucial aspects of bad faith trademark registration claims in the entertainment sector. The dispute centered on a trademark registration filed for cosmetics under Class 3, strategically positioned two months after the series premiere. The contested trademark is related to a fictional character portrayed as an extravagant couturier in the series, creating an unexpected intersection between beauty, fashion, and trademark law.

 

The INPI’s investigation delved deep into the chronology of events. Their analysis revealed “insufficient evidence” to establish the trademark holder’s awareness of prior use at the filing date. Despite the character “Pierre Cadault” prominently featured in the series as a renowned fashion designer, the evidence failed to demonstrate that the name “Cadault” alone had achieved meaningful recognition in France during the crucial initial months following the show’s release.

 

The art of proving bad faith: Beyond surface-level analysis

 A pivotal element in the INPI’s decision rested on the distinction between industries. While acknowledging the subtle connection between high fashion and cosmetics, the INPI determined that cosmetics operate in a separate commercial sphere from haute couture. This industry differentiation substantially weakened any presumed connection between the character’s name and the registered trademark category.

 

The INPI emphasized a fundamental principle: “mere awareness” of prior use does not constitute fraudulent intent. The burden of proving bad faith registration demands concrete evidence that the filing was specifically calculated to prevent a third party from utilizing a necessary business identifier. The timing of the registration, occurring two and a half months post-series launch, combined with the absence of communication between parties, significantly influenced the final determination.

 

The INPI’s reasoning revealed a subtle understanding of practical trademark enforcement. The notable absence of any legal action by the trademark holder to prevent the character’s name use in the series substantially undermined claims of malicious intent. This passive approach contrasted sharply with typical bad-faith scenarios, where trademark holders actively pursue cease-and-desist measures or legal proceedings.

 

A framework precision for evaluating bad faith

 The decision carried significant implications for the intersection of entertainment properties and trademark rights. The INPI acknowledged that while obtaining an injunction to prevent character name use would be legally challenging, potential conflicts could arise if Viacom pursued character-based cosmetic products. This nuanced observation highlights the complex relationship between entertainment content and commercial trademark rights.

 

This decision clarifies the framework for assessing bad faith in entertainment-related trademark registrations. The ruling emphasizes the critical importance of substantial evidence, industry context, and practical commercial implications. Future disputes will likely reference this decision’s “balanced approach” to evaluating trademark validity in the entertainment sector.

 

Conclusion

 The INPI’s thorough analysis offers valuable guidance for navigating the complex landscape of entertainment property rights and trademark protection. The decision underscores the necessity of considering both immediate and potential future commercial applications when evaluating trademark registration intent. This forward-looking perspective ensures that trademark protection serves its intended purpose without unduly restricting creative expression in the entertainment industry.

 

The ruling’s subtle approach to analyzing bad faith claims provides a robust framework that balances the legitimate interests of trademark applicants with those of entertainment property rights holders. As the entertainment industry continues to evolve, this decision will serve as a crucial reference point for resolving similar disputes, ensuring fair and practical outcomes in the dynamic intersection of entertainment and trademark law.

 

 At Dreyfus Law Firm, we recognize that the entertainment and media landscape present unique challenges for trademark protection, as evidenced by the recent “Emily in Paris” case. Our expertise lies in navigating these complex intersections between creative content and trademark rights. We guide entrepreneurs and companies through the intricate process of establishing and defending their trademark rights, particularly when industries overlap, as we saw with the fashion and cosmetics sectors in this case. “Bad faith claims” require sophisticated analysis and compelling evidence, but they are insufficient to demonstrate prior use or knowledge. Dreyfus Law Firm excels at building comprehensive strategies that consider both immediate concerns and future commercial implications. Our team prides itself on helping clients understand the practical aspects of trademark enforcement while ensuring their intellectual property assets are properly protected across multiple industries and jurisdictions.

Dreyfus Law Firm partners with an international network of lawyers specializing in intellectual property law.

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Can the Google trademark become a generic term, or does it remain a valid trademark?

nathalie dreyfus Written by Nathalie Dreyfus27/11/2014

Introduction

The term GOOGLE is one of the clearest examples of a trademark that has entered everyday language without, to date, losing its essential legal function. It is common to hear users say that they will “google” a person, a company, a product or a legal issue. For a trademark owner, this linguistic success may appear ambivalent: it reflects exceptional reputation, but it may also raise a risk of genericide.

In Elliott v. Google, the U.S. courts confirmed that the GOOGLE trademark had not become generic for internet search engine services. The case remains a key reference for distinguishing the popularity of a term from the loss of its legal distinctiveness.

Elliott v. Google: an attempt to cancel the GOOGLE trademark

The dispute arose after David Elliott and Chris Gillespie registered several hundred domain names incorporating the term “google”, often combined with trademarks, public figures or places.

Google first obtained the transfer of those domain names through UDRP proceedings. The domain name holders then sought to cancel the GOOGLE trademark, arguing that the term had become a generic verb meaning “to search the Internet”.

Under U.S. law, the analysis is based on the “ primary significance test ”. This consists in determining the main meaning of the sign for the relevant public. If the public still perceives the sign as an indication of commercial origin, the trademark may remain valid. In the Google case, the plaintiffs relied heavily on the verbal use of the term, but failed to prove that the public primarily understood GOOGLE as the generic name for search engines.

In a decision rendered on May 16, 2017, the U.S. Court of Appeals for the Ninth Circuit upheld the decision in favor of Google. The significance of the appellate decision may be summarized as follows:

  • The everyday use of a trademark in ordinary language is not sufficient, in itself, to cause its genericide.
  • The use of a trademark as a verb, for example “to google”, does not automatically mean that the trademark has become a common name.
  • The central criterion is the perception of the relevant public: it must be determined whether the sign primarily designates a commercial origin or a category of goods or services.
  • A very well-known trademark may therefore remain protected, even if it is widely used in everyday language.
  • The decision nevertheless reminds trademark owners of the importance of monitoring and controlling the use of their signs in order to prevent them from gradually becoming generic designations.

What is the approach under French law and European Union law?

French law and European Union law also recognize the mechanism of trademark genericide.

  • In France, Article L.714-6 of the French Intellectual Property Code provides that a trademark owner may be deprived of their rights where the trademark has become, through their own conduct, the usual designation in trade for the relevant product or service. In such a case, the trademark is no longer distinctive, as it no longer enables consumers to identify the commercial origin of the product or service concerned.
  • At European Union level, Article 58(1)(b) of Regulation (EU) 2017/1001 provides for revocation of an EU trademark where, because of acts or inactivity of the proprietor, the trademark has become the common name in the trade for a product or service for which it is registered.

What best practices should be adopted to protect a strong technology trademark against genericide?

The GOOGLE case is particularly useful for companies active in artificial intelligence, SaaS software, digital platforms, mobile applications, marketplaces and specialized search engines. In these sectors, a service may quickly become part of everyday vocabulary.

For trademarks known to a significant part of the public, it is essential to regularly remind users that they are not common names, but trademarks designating the products or services they cover, in order to prevent them from becoming generic. What form can this strategy take?

Companies may

  • Use the trademark as an adjective and associate it with a generic designation of the product or service;
  • Publish trademark usage guidelines;
  • Correct partners’ communications;
  • Monitor domain names and online content that present the trademark as a generic term.

  • To learn more about best practices for preventing the genericide of your trademark, we invite you to read our previously published article.

Conclusion

The GOOGLE trademark remains valid because it has not been shown that the public primarily understands it as the generic name for search engines. The use of a trademark as a verb may create a risk, but it is not sufficient, in itself, to establish genericide.

The broader lesson is that the more successful a trademark becomes, the more carefully it must be managed. Trademark owners must monitor uses, correct generic uses and preserve the sign’s function as an indication of commercial origin.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

Is trademark genericide irreversible?

Not necessarily, but it is difficult to reverse once it has taken hold. The more a sign is perceived by the public as a generic term, the harder it becomes to restore its distinctive function. This is why prevention is essential.

Can a trademark become generic only for certain goods or services?

Yes. Genericide is assessed in relation to the goods or services concerned. A trademark may lose distinctiveness for a specific category, while remaining protected for other activities if the public continues to perceive it as an indication of commercial origin in those areas.

Should a start-up be concerned about genericide from the launch of its trademark?

Yes. Even if the risk may seem remote at the beginning, good practices should be implemented from launch: choosing a distinctive trademark, ensuring consistent communication, using appropriate trademark notices, monitoring usage and educating marketing teams. It is easier to prevent banalization than to correct it once it has become established.

Can a company encourage the use of its trademark while avoiding banalization?

Yes, but it must strike the right balance. A company may naturally seek to make its trademark visible and memorable, but it must avoid encouraging its use as a common name. Communication campaigns should therefore strengthen the association between the sign and the company, rather than presenting the trademark as the generic name of the service.

Is a very famous trademark more exposed to the risk of becoming generic?

The more a trademark becomes dominant in its sector, the more likely it is to be used by the public to refer to an entire category of goods or services. Reputation is therefore a commercial asset, but it also requires increased vigilance to prevent the trademark from becoming the common name of the product or service concerned.

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