Trademark Help

[TotallyClueless]

Hi all, and thanks in advance for any help you can offer,

I'm in the process of setting up a new business, however it is proving difficult in the arena of Trademarks and would like some opinion on it. I am in the Caribbean but the law here is almost a mirror of US trademark law and obviously I still have the lawyers to have the final consult with here.

My issue is that I'm being told I have to registered what to me seem like far too many trademarks, logos, trading names etc.

Let say I have a business called Intelligent Technology (im making it up btw..)

and I have a company logo which consists of the letters IT in some graphical form. Now I have to register that as a trademark I know, and the business is registered as a Limited Company.

Now the business is going to be undertaking much online marketing, and under the brand, so like...

IT Cars
IT Books
IT Foodstuffs.

Each of which incorporates the logo of the parent, however i want to attach identity to each by using a different color for each brand. So, say, IT Cars would be blue, IT Books red etc....

I already own my domains, itcars dot com etc....

and it is possible that we may want to use the identities in the real world at a later stage, and not just online.

So, for the moment I'm told I need to register the IT logo, each area logo individually, each trading name in the IT arena, and the arena in which it trades (multiclass). Which leaves a LOT of trademarks and a lot of cost.


To me (non-lawyer), if I register my original logo, surely that same graphical image would be protected. So nobody else would be able to register that Mark? no? so why all the logos again? I cant change the color of the Pepsi logo and say its mine to sell say IT hardware can I?

Also, if I have IT Books as an online business registered selling books, do I then need IT Books class as a bookstore to stop Mr Smith opening his bookstore by exactly the same name?

As we make some money, I don't have a problem later covering the bases, but for me to pay (from memory) $500 per submission to the lawyer, plus the costs to the Trademarks $200, I will be broke before I start.....

I know I can't stop people using "IT" as its a common usage, so any help you can offer on the vague facts I've given would be appreciated, before I have the sell the car to open my business!!!!

Thanks

Mr TotallyClueless

 

[Michael Wechsler]

Your advice is probably right. But note that if you have a unique "IT" look and feel image that is registered as your mark (the "drawing") then anything else with a similar image that uses your "IT" logo portion could be seen as confusing. With regard to your other parts to your logos, well... they are each unique and probably do need to be registered. What did they tell you?

 

[TotallyClueless]

Your advice is probably right. But note that if you have a unique "IT" look and feel image that is registered as your mark (the "drawing") then anything else with a similar image that uses your "IT" logo portion could be seen as confusing. With regard to your other parts to your logos, well... they are each unique and probably do need to be registered. What did they tell you?

I was told to register everything, but budget constraints do put the kybosh on that many registrations, its just not feasable cost wise. We have a first usage rule for registration, as long as we use it unchallenged for 6 months from first publication. I know that is very risky though, as I am not sure what constitutes first publication to the letter of law. If I simply load the logos to the waiting websites would that do it?

My thinking, (which is not a legal trademark lawyers obviously) is that my logo is my design, my unique "IT" logo. Now that unique look an feel should protect others from registering the same thing, even if they try to register a different color of it. Now I know that if I use the logo in a different color that the registered it is only a TM and not R, but seeing the original design prevents anyone else from registering the same thing but in a different color, Im protected.

As regards the trading styles of each website, yes, I know I will have to register each of my IT Books etc... websites as a name. Again here, does this mean that I have to register that name as multiclass though. If I sell books, I have to register the online class and also bookstore class, as someone could open IT Books as a business in the local mall using my name, and in turn stop me from using in the real world...

Its so damn confusing!!

 

[CliffordDHyr]

We have a first usage rule for registration, as long as we use it unchallenged for 6 months from first publication. I know that is very risky though, as I am not sure what constitutes first publication to the letter of law. If I simply load the logos to the waiting websites would that do it?

What does that mean? Are you registering your marks on the federal register or a state register? Who is "we" in your phrase "We have a first usage rule for registration"? I am a trademark attorney and I think your situation is not as tricky as you think it is, but I am puzzled by the quoted passage.

 

[TotallyClueless]

What does that mean? Are you registering your marks on the federal register or a state register? Who is "we" in your phrase "We have a first usage rule for registration"? I am a trademark attorney and I think your situation is not as tricky as you think it is, but I am puzzled by the quoted passage.

Thanks for the response, and yes, sorry I didn't explain better. Stems from the fact that I'm not in the US but the Caribbean, Dominican Republic to be precise.

The We is the country. So it should read really...

"The Country has a first usage rule for registration". Basically, if someone is using the mark/name unobstructed (I think it would translate as) for 6 months from first commercial publication, that person has the overriding right of registration. I have no idea how the reality of monitoring that would go though!

Thanks again all for your input. I've spoken to another lawyer, and the first one has changed their recommendation again to something less, but thats typical here unfortunately. You get better information looking for it yourself and telling the lawyers what you need....!!!

Silly I know.

 

[TotallyClueless]

Sorry, my explaination was weak. It is the country I am discussing as the We, as I'm not in the US, despite the law has been pretty much mirrored.

Basically, it states that if your mark/name has been commercial published and used unobstructed (I think it translates as) for a period of more than 6 months, then the person has the right of registration. I don't know how the reality of that would work though.

I spoke to another lawyer for a 2nd opinion and they were sketchy, and the first has now amended what they told me initially completely. Unfortunately, this kind of unreliability here is normal and accepted. Its more reliable for most to go to the lawyers with a good idea of what needs doing in order to "guide" them in the right direction, and to keep them on their toes. They might actually have to get that trademark law off the shelf for once and actually read it.......

Probably sounds absurd to most readers, but thats what we learn to live with here!

 

[Michael Wechsler]

You always have to publish a mark for objection. I find the process a little strange sometimes since it implies that everyone reads the TM register and we don't. But regardless, I don't know the law there. If first usage is the law then you may have acquired some rights. Here there are common law rights of usage but you don't get federal (countrywide) protection unless you register a federal trademark.