How do I trademark and copyright my logo and wordmark?

Henry Thoreau once said: "It's not what you look at that matters, it's what you see." So let's clarify some terms and definitions first, to make sure we are on the same page here and that you see the same things I see.

Trademark in Vietnam

When speaking about "logos" and "word marks", it is important to realize that those terms are not interchangeable, from a trademark attorney's perspective. There is a clear legal distinction. By definition, a “word mark” includes words only. If a mark includes some graphical/design elements instead of, or in addition to, words, then a trademark attorney would refer to such a mark as a “design mark” or a “logo”.

So if you have two separate trademarks (one of which is a word mark and another is a logo/design) then those would be two separate trademark applications. That applies even if the logo incorporates the same wording that you use separately as a word mark. Assuming both the logo and the word mark are used for exactly the same goods/services, then, yes, you would claim the same International Class(es) in both applications.

If a design mark / logo crosses a certain originality threshold, then it can also be eligible for copyright protection. The threshold is not overly high, but it does exist. If you merely apply some minor stylization to your word mark (e.g., the words appear in an unusual font) or your mark consists of a simple geometrical shape (e.g. a circle) with some words inside, then there might not be enough originality there to claim copyright protection. On the other hand, if a logo incorporates a drawing of animals, objects, people, etc., then it will be much more likely that the originality threshold has been crossed, and copyright protection will automatically attach to the logo as of the date it was created. There is a maze of rules as to which logos are copyrightable and which are not, but I think you got the overall picture.

As to word marks, generally they cannot be copyrighted, but like with everything in life, there are exceptions. But that is a separate long story.

A copyright owner is not required to obtain a copyright registration for his/her work (since copyright protection is automatic), but it is a very good idea to get a formal copyright registration as that provides significant benefits (i.e., public record of ownership, which can negate certain defenses an infringer might have, access to federal courts, a certain level of protection against importation of counterfeit products, etc.)

Related post: 

What is the difference between a trademark and a wordmark?

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Vietnam Ratifies the Comprehensive and Progressive Agreement for Trans-Pacific Partnership

Vietnam has recently ratified the Comprehensive and Progressive Agreement for Trans-Pacific Partnership – CPTPP (before Trans-Pacific Strategic Economic Partnership Agreement – TPP. This Agreement was signed on 08 March 2018 in Santiago, Chile including 11 countries New Zealand, Canada, Japan, Mexico, Singapore, Brunei, Chile, Malaysia, Peru, Australia and Vietnam.

Law firms in Vietnam

TPP was initially expected to form a largest free trade area in the world with the participation of the United States of America (USA). Nonetheless, the President of USA – Mr. Donald Trump – withdrew USA from TPP, and the remaining members have to re-negotiate and establish CPTPP as a result. Eleven countries participating in the CPTP have total GDP of USD 10,000 billion equivalent to 13.5% of global GDP.

CPTPP will contribute to boost the export of goods to major markets such as Japan, Australia, Canada and Mexico as well as attract foreign investment into the sectors that Vietnam needs to be developed. Further, this participation has established trade relations with the countries which have never signed a free trade agreement with Vietnam before such as Canada, Mexico or Peru. One of the commitments of CPTPP, the members of CPTPP agree to eliminate import duties on almost all products within 7 years, and Vietnam is flexible up to 10 years. Joining CPTPP, Vietnam not only commits to open up markets, remove tariff barriers, continue to open and facilitate trade, but also continues to show the transparency of the State management on market’s development. The business lines being benefited directly and strongly from CPTPP are garment, textile, footwear, food manufacturing, drink, confectionaries, tobacco, …which is expected to receive investment from oversea through setting up factory, company and business joint venture inVietnam.

Further, CPTPP regulates the new legal issues being labour, environment, government procurement, Intellectual Property, state enterprises, …The CPTPP essentially retains the provisions of the TPP Agreement, but with the USA withdrawal, it allows Member States to reserve a number of articles to ensure the balance in the new situation.

In conclusion, Vietnamese enterprises should firstly keep up the commitments of CPTPP in order to seek up the favorable policy trends and to prepare the plans to build competitiveness and enhance the prestige on brand and product quality.

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What is the difference between a trademark and a wordmark?

We have established that a wordmark is a logo, but not every logo is a wordmark.

A wordmark or logotype is usually a distinct text-only typographic treatment of the name of a company, institution, or product name used for purposes of identification and branding.

A trademark on the other hand can be a recognizable sign, design, or expression which identifies products or services of a particular source from those of others.

 Trademark registration services in Vietnam  

The number one difference between logos and wordmarks is that wordmarks are text-based logos. These types of logos are completely devoid of extra pictures, meaning that logos such as Pepsi and MasterCard are not wordmarks, since these logos contain images as well. You can probably think of several examples of wordmarks off the top of your head, but some of the most famous are FedEx, Coca-Cola and even world-famous Google. These are all examples of highly successful and easily recognizable wordmarks that are easily identified with around the world.

Why would someone use wordmarks over something like a pictorial graphic?

It ties into the fact that they are a more direct type of branding. When you provide just a picture, such as Joomla's logo, you have to have faith that a person can learn the association between a picture and a name and service, keeping them separate from other pictorial logos. Imagine if all of our favorite brands and companies were only identified by a simple graphic. We would have hundreds or even thousands of these little pictures to remember. Trying to keep them straight would become very confusing!

When providing a wordmark, such as Google, you provide a name while still providing a recognizable image for the viewer. Wordmarks are becoming the standard when it comes to designing logos, as it has been observed by some studies that they are more effective than their pictorial counterparts are.

A trademark is a word, name, symbol or device which is used in trade with goods to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms “trademark” and “mark” are commonly used to refer to both trademarks and servicemarks.

Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks which are used in interstate or foreign commerce may be registered with the Patent and TrademarkOffice. The registration procedure for trademarks and general information concerning trademarks is described in a separate pamphlet entitled “Basic Facts about Trademarks”.

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How can I avoid trademark infringement?

Avoiding a trademark infringement from occurring is crucial to building up trust in the market. There have been instances where brands have unknowingly infringed on other brands due to a variety of reasons. The best way to avoid infringements is to compare the trademark, study related products and services, checking the strength of the mark and learning from the existing confusion among consumers, all of which we have briefly covered in this article to help you avoid infringing upon an already existing mark.

Trademark registration services in Vietnam  

To avoid trademark infringement, the company needs to work on the following before carrying forward the process of trademark registration or usage in the market.

1. Comparing the Trademark:

There should be a thorough research of the trademark that is decided to be used to avoid confusion or clash with other existing marks.

The Trademark database should be well researched and if similar marks are found, then one needs to analyze the features that can cause infringement like appearance, sound, concept, etc.

2. Study related products and services:

Herein, the comparison of actual product and services are done and not the class number of registration to find out the identical features that might lead to infringement.

3. Check Strength of the Mark:

This is another factor that determines the level of strength of the trademark which varies from generic, suggestive to arbitrary.

The lesser is the strength; it is more likely to be infringed.

4. Learn the existing confusion among consumers:

At times, you will see people calling up a wrong company for a similar product, it is then, that you need to realize that the trademark is directing to confusion and misguiding the consumers.

This might lead to infringement, and to avoid that, precautions are to be taken to curb such events or situations.

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The Cases of Transferring Money from Vietnam Abroad

In the context of international economic integration, more and more foreign investors are coming and investing in Vietnam. Besides, many Vietnamese individuals and organizations have also implemented many investment activities, living, traveling… abroad. Therefore, there are needs to transfer money fromVietnam abroad. According to the provisions of Vietnamese laws on foreign exchange management, domestic individuals and organizations are allowed to transfer money  abroad in the following cases:

Banking Law firm in Vietnam

For individuals being Vietnamese citizens, they are entitled to buy, transfer or bring foreign currencies overseas according to the State Bank’s regulations for the following purposes: to study and receive medical treatment abroad; traveling; business trip; visiting abroad; to pay charges and fees to foreign countries; allowances for relatives members living abroad; transfer of inheritance money to overseas heirs; transfer money in case of permanent residence abroad; One-way money transfer for other legitimate needs.

For enterprises, they are allowed to transfer money abroad when performing the following cases: Carrying out payment and transferring money related to the import or export of goods and/or services; payment of payments and remittances related to commercial credits and short-term bank loans; make payments and transfers related to direct and indirect investment income; transfer money when being allowed to reduce direct investment capital; payment of debts and interest of foreign loans; make one-way money transfers; payment and other remittance according to regulations of the State Bank of Vietnam.

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Why Trademarks Are So Important to Your Business?

Trademark is a sign for consumers to identify the goods or services of each company from those of others.

Trademarks are an important part of client company’s competitive edge. As consumers, our purchasing decisions are constantly influenced by trademarks. As business people, we should have a better understanding of why trademarks are so important to effective commerce. Trademarks are also used as a way of protecting consumers. When businesses are responsible for any products or services bearing their trademark, they tend to take more pride in products. To maintain a good reputation, trademarked companies will often work harder to provide quality services and products. Reasons 

Trademark registration services in Vietnam 

 Trademarks Are Important to Your Business.

- Trademarks make it easy for consumers to find you.

- Trademarks help prevent marketplace confusion

- Trademarks are a very economically efficient communication tool

-Trademarks are your most enduring assets.

-Trademarks support stronger sales volume, stronger margins, and can provide price maintenance legally

-Trademarks are relatively inexpensive to protect

-Trademarks allow businesses to most effectively utilize the Internet

-Trademarks are very effective against unfair competition

1. Trademarks make it easy for consumers to find you.

◦ Trademarks help you distinguish your products and services from those of competitors and help identify you as the source.

◦ Trademarks indicate a consistent level of quality of your products and services.

◦ Awareness of your brand and the goodwill embodied in your trademark can often take decades to establish.

◦ Aggregate cost of advertising, promotion, marketing, and sales efforts can easily reach into tens of millions or even billions of dollars, depending on the product/service.

◦ Differentiating your product/service from competitors is increasingly difficult to achieve, especially over a protracted period.

◦ Trademarks are the most efficient commercial communication tool ever devised to:

• "cut through the clutter";

• capture the consumer's attention; and

• make your products/services stand out.

2. Trademarks help prevent marketplace confusion

◦ Trademarks protect the consuming public by preventing confusion as to the source of goods or services.

◦ If the product made under a brand turns out to be defective, consumers have accurate information about the source of a product and can return it to the manufacturer or supplier for a refund.

◦ Trademarks give consumers the ability to protect themselves by relying upon known brands of products or services.

◦ Trademarks provide consumer convenience by allowing consumers to identify (by word, logo, slogan, package design, or other indicators of origin) which product or service they would like to purchase or to avoid purchasing.

◦ Trademarks provide consumer convenience by allowing consumers to base their purchasing decisions on what they have heard, read, or experienced themselves.

◦ Trademarks motivate companies to provide a consistent level of quality, helping the consumer to decide whether to purchase a desirable product or service again or to avoid an undesirable one.

3. Trademarks are a very economically efficient communication tool

◦ Trademarks dramatically reduce the costs of decision-making by allowing consumers to rapidly select the desired product or service from among competitive offerings.

◦ Trademarks can wrap up in a single brand or logo intellectual and emotional attributes and messages about your:

• Company;

• Reputation;

• Products and services; and

• Consumers' lifestyles, aspirations, and desires.

◦ Trademarks can work effectively across borders, cultures, and languages.

◦ Famous marks can be recognized as brands even when the native population speaks a different language and reads a different alphabet (i.e., the McDonalds "arches" logo, the NIKE "swoosh" logo).

4. Trademarks are your most enduring assets.

◦ Trademarks are one of the few assets that can provide you with a long-term competitive advantage.

◦ Trademarks are usually the only business asset you have that can appreciate over time.

◦ Trademarks are leverageable - they provide value beyond your core business, and can pave the way for expansion (or acquisition, if desired) of your business.

• Brand Expansions:

• KELLOGG'S - from "ready-to-eat cereals" to "snack bars and breakfast bars"

• ARMANI - from "runway apparel" to "perfumes and eyewear"

• VIRGIN - from airline services to entertainment media and carbonated drinks

5. Trademarks support stronger sales volume, stronger margins, and can provide price maintenance legally.

◦ It is often difficult to see significant differences among competing products.

◦ Your brand can be the critical factor in driving the consumer's purchase decision.

◦ The price variance among competitive offerings can also be substantial, often by 100% or more in the same setting, such as a newspaper. Once again, your brand can make the difference.

6. Trademarks are relatively inexpensive to protect

◦ Once you have successfully registered a trademark, it has a potentially infinite lifespan with the filing of renewals. Renewals can be filed every 10 years after registration in the U.S. so long as the mark is being used in commerce (there are certain exceptions to this use requirement that will not be discussed here).

• COLT (first registered in 1889))

• QUAKER (first registered in 1895)

• PEPSI-COLA (first registered in 1896)

• MERCEDES (first registered in 1900)

◦ Trademarks share attributes with other forms of property, like real estate, as they can be:

• Bought and sold ("Assignments")

• In the acquisition of a business

• In the acquisition of a specific product line

• Pledged (as security, like a mortgage)- to secure loans to a business

• Licensed (like renting or leasing)

• Character merchandising

• Sports endorsements and sponsorships

• Co-branding promotions, sweepstakes, contests.

7. Trademarks allow businesses to most effectively utilize the Internet

◦ Trademarks are often the "top-of-mind" address for an Internet user seeking information about a company and its products/services.

◦ Higher traffic on a website translates into higher rankings on search engine results, bringing even more traffic.

◦ As a result of the importance of the Internet to marketing, it is crucial to obtain desirable domain names at the same time that a trademark is adopted.

◦ The Internet also has the potential for widespread unauthorized use of your brand, requiring vigilance to police both proper use of your brand and infringements of it:

• META tags

• Embedded or hidden text

• Counterfeits and design knockoffs

• Gray market goods

8. Trademarks are very effective against unfair competition

◦ In the United States, deceptive and misleading advertising is prohibited by: Consumer protection laws; Unfair competition laws; and The U.S. Trademark statute.

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Do you have to buy trademark in all countries?

If you or your business operate a website, you should get a US trademark, unless the website uses a ccTLD other than the .us TLD. There are many benefits to getting a US trademark. A US trademark seems to be the most popular jurisdiction for trademarks.

Trademark Use In USA

If you operate a blog with Amazon or CJ or other US-based affiliate ads or even Google Adsense, you may base your application based on actual use in commerce in the USA by claiming “Online advertising and promotional services” as your service.

Trademark in Vietnam 

If you operate a website that sells goods directly or by drop shipping, you should be able to claim services such as an “On-line retail store services featuring … (describe your goods.)”

Make sure that you use your trademark within view of your ads when creating your website, otherwise, the USPTO may reject your trademark specimen. USPTO trademark applications are usually examined within 4 months and you can get a registration within 8 months.

Getting a US-based trademark is generally preferred for protecting domain names with the .com, .net, .org, and .us TLDs from UDRP or Cybersquatting Complaints.

In what other Countries Should I Register my Trademark?

Your business should register its trademark in every country:

·         where it does business,

·         where it will be offering its goods and services,

·         where it manufactures its goods, and

·         where you plan on licensing your company’s trademark.

Some jurisdictions don’t need use before registration, such as the UK and the EU, and China. Other countries allow for registration based on use and registration abroad, such as the USA and Canada. In any case, trademarks are vulnerable to cancellation after the third anniversary of their registration in most countries if you can’t prove “use of the trademark” within the previous 3 years.

The UK examines and usually approves trademarks within 3 months of filing your application.

The EU examines and usually approves trademarks within 6 months of filing your application.

Canada’s trademark office, CIPO, has typically been taking 12 to 14 months to examine trademark applications filed since 2016.

Oppositions cause uncertainty and can get expensive. Any interested person may oppose a trademark application after a trademarks office has approved it and published it for “opposition” in its Trademarks Journal. If there’s no opposition, most countries will send you a Notice of Allowance.

Some countries require a registration fee. The USPTO requires a Statement of Use fee.

In any case, it is wise to file your trademark applications as soon as you adopt and clear a trademark. If you are planning on growing your business quickly or launching a product before getting a Notice of Allowance, it is important to do a full trademark search to clear your trademark choice. Otherwise, you may face a trademark infringement lawsuit soon after your sales start growing or your website gets traffic.

If you think that you have a very valuable domain, trademark the domain either in the US or in the country that you list in your address as the registrant of the domain name.

Global Trademarks

There’s no such thing as a Global trademark. The Madrid Protocol, however, allows you to file one application in many countries using WIPO’s Madrid System. Trademarks

How can I protect my trademark?

Trademarks are registered at the national and regional levels. For example, there are trademark offices in each country in the EU and there's an EUIPO trademark office https://euipo.europa.eu/ohimport....

So you can have a trademark registered in Italy, Spain, Croatia, and Romania, as well as in the EU.

Trademark law, treaties and documents

The treaties WIPO administers, together with national and regional laws, make up the international legal framework for trademarks.

Trademark-related treaties administered by WIPO

·         Paris Convention

The Paris Convention is an international treaty that allows applicants to file a first application in their home country. That application is referred to as a priority document or filing, and the date it is filed is called the priority date.
→ The Paris Convention gives you a 6-month window to file additional trademark applications in various countries after you file a trademark application in your home country and still claim your priority date.

·         Madrid Agreement (Marks)

Nationals of any of the Madrid contracting countries may, in all the other countries party to this Agreement, secure protection for their marks applicable to goods or services, registered in the country of origin, by filing the said marks at the International Bureau of Intellectual Property (hereinafter designated as "the International Bureau") referred to in the Convention establishing the World Intellectual Property Organization (hereinafter designated as "the Organization"), through the intermediary of the Office of the said country of origin.

·         Madrid Protocol

The Madrid system comprises two treaties; the Madrid Agreement Concerning the International Registration of Marks, which was concluded in 1891, and entered into force in 1892, and the Protocol Relating to the Madrid Agreement, which came into operation on 1 April 1996.

·         Nice Agreement

The Nice Agreement established a classification of goods and services for the purposes of registering trademarks and service marks (the Nice Classification), in classes numbered 1 to 45.

·         Vienna Agreement

The Vienna Agreement, concluded in Vienna in 1973 and amended in 1985, establishes a classification (the Vienna Classification) for marks that consist of, or contain, figurative elements, in classes 1 to 29 and up to four sub-levels.

·         Singapore Treaty

A modern and dynamic international framework for the harmonization of administrative trademark registration procedures.

·         Trademark Law Treaty

The Trademark Law Treaty (TLT) standardized and streamlined national and regional trademark registration procedures by simplifying and harmonizing those procedures to make trademark applications and the administration of trademark registrations in multiple jurisdictions less complex and more predictable. The procedures are divided into three main phases:
1. application for registration;
2. changes after registration; and
3. renewal.
The rules concerning each phase are constructed so as to clearly define the requirements for an application or a specific request.

·         Nairobi Treaty:

All States party to the Nairobi Treaty are under the obligation to protect the Olympic symbol – five interlaced rings – against use for commercial purposes (in advertisements, on goods, as a mark, etc.) without the authorization of the International Olympic Committee.

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