This blog post was written by INTA's 2015 Non-Profit Committee.
The principal way to protect a trademark is through registration. In most jurisdictions, registration establishes trademark rights. Trademarks should be registered wherever your organization is active.
To best navigate the registration process, a key person should be appointed within the organization to be responsible for trademarks and the registration process. Often, this position is called a trademark administrator. A trademark administrator acts as a liaison between those internally who are responsible for brands (e.g. marketing) and outside trademark counsel.
A trademark administrator must learn how the trademark registration process works, even if the organization is using outside counsel to carry out the actual registration. A comprehensive list of all trademarks and related files should be maintained for each trademark, indicating the status of each application filed and all relevant deadlines. A similar system should be set up as a reminder for the renewal of trademarks. Quite often, a trademark administrator is also responsible for the registration and renewal of domain names.
In some cases the trademark administrator will interact with foreign counsel to protect the organization’s trademarks in other jurisdictions. It is important to be aware of the benefits available to an applicant under international conventions—for example, priority filing dates and the ability to register based on a home registration. Also, awareness of the Madrid Protocol also would be of benefit to international organizations.
The international registration process is most efficient when the trademark administrator handles every matter. There are similar requirements for filing in each country—for example, the mark the identity of the applicant, a description of the goods or services (and international classes), and, in some cases, the mark’s first use dates and specimens of use. A trademark administrator ensures that a consistent process is followed in searching trademarks prior to the adoption of any mark and prior to filing applications for registration.
Essential information on trademark protection worldwide is available on the website of the International Trademark Association (INTA) in Country Guides. Each jurisdiction profile in Country Guides offers practical advice on trademark filings, prosecution, registration, maintenance, and enforcement. Advice is also available directly through the websites of intellectual property offices (IPOs) in individual countries, such as the United States Patent and Trademark Office (USPTO).
It is useful for the trademark administrator to keep detailed records of information regarding the first use of each trademark, with examples of promotional materials, packaging, and labeling, and a list of the goods and services actually provided in association with each trademark.
The trademark administrator ensures that internal rules are clearly set out and followed regarding proper trademark usage. Proper use guidelines include how a trademark is to be used in a sentence and how notice of the trademark should be provided to the public. Such rules should be available to all divisions or branches of the organization, so that even if, for example, an initiative originates at a local level, that initiative will be known to the entire organization.
In most cases, the national or central part of the organization should have the responsibility for trademarks. The officers of the organization can then exercise control over how trademarks are used and can ensure that each trademark remains distinctive. In addition, central guidance allows for the application of a consistent strategy concerning international filings. Finally, marks may be licensed from the national or central part of the organization, rather than allowing each local unit to license trademarks to other local units.