How To Safeguard Intellectual Property Assets?

Welcome to Plaskacz and Associates 'LEGAL SOLUTIONS TO SOFTWARE ISSUES' newsletter. This is a free information service provided by the law firm of Plaskacz and Associates. IT IS DESIGNED TO PROVIDE INFORMATION OF A GENERAL NATURE ONLY AND IS NOT INTENDED TO REPLACE SPECIFIC LEGAL ADVICE. Q4 2002

When adopting a trademark for a software product or service, the first step is to determine whether there has been prior use of that mark on similar goods or services in the marketplace. This can be particularly difficult for companies that market their products or services internationally since there is no single global scheme for trademark protection. Each jurisdiction has its own laws and regulations, although to some degree international treaties have standardized certain modes of protection. Your trademark lawyer will have access to international databases of registered trademarks that will be the starting point to your search.
Once a search has been conducted, your trademark counsel will evaluate the search results in order to provide you with an opinion as to whether or not the mark is available for use and registration.

Assuming a decision has been made to proceed with the mark, the next stage is filing a trademark application in each country in which registration is being sought. NAFTA has not adopted a central registry, however, the EEC has implemented a European wide registry that confers protection in all EEC countries. One downside risk, however, is that a prior registration in a single country could defeat the application. Assuming your mark otherwise qualifies and no opposition is encountered or, alternatively, is successfully overcome, your application will in due course proceed to registration.

Product names should always be protected as trademarks by identifying them as such. Unregistered names should be accompanied by a ™ or MC (marque de commerce) in the upper right hand corner and once registration has been obtained, the names can be labeled with an ®. Since use of a trademark registration symbol in the United States prior to securing a US registration is illegal, North American advertisements of Canadian companies promoting products whose names are registered in Canada should be referenced as being PRINTED IN CANADA.
In addition, it is imperative that trademarks be used at all times, especially in advertising, as adjectives, never as nouns or verbs. The trademark is used to identify the goods or service, never to replace the name of the goods or service. Improper use of a trademark, or allowing others to use the trademark improperly, can result in the trademark becoming generic and open to use by others in the public domain, thus negating any rights that you may have. A trademark becomes generic when it is commonly accepted to use the trademark name of the product instead of the actual name. 'Escalator' was formerly a trademark for a certain brand of 'moving staircase'. Since the name 'Escalator' became generic, the Escalator company could no longer stop other manufacturers from using the word to describe their 'moving staircases' and the Escalator company lost its brand name recognition. Recently Rollerblades® fought to stave off the same fate.

Special consideration also arises when a trademark is used by a licensee. The owner of a trademark is responsible for ensuring that all the goods and services bearing that trademark are of the same consistent quality. This protects the public by allowing them to assume consistency through repetitive purchases. Trademark owners are also obligated to ensure the public is not confused by the origin of the goods and services. This requires proper notice to be employed when a trademark is used by a licensee so that there is no confusion as to the source of the goods and services.

The Canadian Trade-marks Office will prevent anyone else from registering a mark that is the same as or confusingly similar to your mark. The Trade-marks Office does not, however, keep an eye out for cases of infringement. It is the trademark owner's responsibility to monitor the marketplace and, if it is found that someone is using a mark or a trade name that is confusing with your mark, to take legal action.

SOLUTION: Review all trademark usage and marking. Set guidelines for employees and licensees to follow.

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