Meeting Distinctiveness Requirements for International Trademarks

Description

Different countries have different processes and requirements that brand owners must navigate in order to build brand portfolios and protect their brands. Most countries include distinctiveness as one of the essential requirements for registering a trademark or service mark. Under U.S. law, a trademark must either be inherently distinctive or have acquired a secondary meaning that distinguishes the goods and/or services prior to or during the examination of the federal application to obtain full protection. Marks may nevertheless be found to lack inherent distinctiveness after the required evidence is provided. For such marks--particularly descriptive and geographically descriptive marks, surnames, and trade dress among others--a showing of acquired distinctiveness can mean the difference between registration on the Principal Register, registration on the Supplemental Register, and abandonment of a federal application.

The challenge in the European Union is that a trademark must be or must have become distinctive in essentially all member states. Considering the variation in language and culture between EU countries, it can be difficult to show how consumer perceptions and market conditions in each of the countries supports a claim of EU-wide acquired distinctiveness. Additionally, in many non-U.S. jurisdictions, marks that are not inherently distinctive must acquire distinctiveness before their applications are filed. On the other hand, such jurisdictions may vary widely in their analyses and assessments of pre-registration use evidence. For example, the China National Intellectual Property Administration follows strict criteria, while Chinese courts will consider a non-exhaustive list of factors when determining if a mark has acquired distinctiveness.

Counsel for multinational companies face the challenge of seeking protection for marks around the globe. As a result, they must understand the different requirements for demonstrating distinctiveness and how to best plan to meet the requirements.

Listen as our authoritative panel of IP attorneys examines the requirements for demonstrating distinctiveness in different jurisdictions. The panel will compare and contrast the requirements and offer best practices for meeting those requirements around the world.