Intellectual Property Law Report: Trademark Registration Analysis

This report provides an in-depth analysis of intellectual property law, specifically focusing on trademark registration and the associated legal complexities. It examines two case studies: one involving Tablex and its "Jingle" trademark for laptops, and another concerning Booties and its "Macho Balm" fragrance packaging shaped like a male torso. The report explores the procedures for trademark registration, the grounds for refusal, and the legal frameworks governing intellectual property, including the Nice classification of goods and services. Furthermore, it discusses the process of responding to a refusal of trademark application. The report emphasizes the importance of adhering to legal requirements to secure trademark protection and highlights the potential consequences of trademark infringement. The report concludes that a clear understanding of trademark laws and diligent application processes are critical for protecting brand identity and avoiding legal challenges. The report is contributed by a student to be published on the website Desklib, a platform that provides all the necessary AI-based study tools for students.

Intellectual Property Law

TABLE OF CONTENTS
INTRODUCTION...........................................................................................................................1
MAIN BODY ..................................................................................................................................1
1. Trademark for Tablex laptops ................................................................................................1
2. Shape of Male Torso, for packaging of Men's Fragrance “Macho Balm” by Booties............3
Respond to refusal on a trademark application...........................................................................4
CONCLUSION ...............................................................................................................................5
REFERENCES ...............................................................................................................................7

INTRODUCTION
Trade mark is denoted as design, unique sign, symbols or expression that helps in
determining the services or products of a particular company. These sign or symbol can legally
be used by only one business or organisation. The present report is in context to two cases that
are related to Tablex and Booties which needs to acquire application in order to get their
trademarks register. Legal bodies play an important role in the registration of trademarks or
hallmarks related to a business or company. The report will discuss about various elements
involved in registry, factors responsible for refusal and classification of goods with respect to the
trademarks. Furthermore, the report will also include a method to respond refusal of a
registration application.
MAIN BODY
1. Trademark for Tablex laptops
Trademark is a sign or symbol which is designed by person, organisation or legal entity
for developing a unique product and differentiate it from its substitutes to attract maximum
customers in the market. Every business needs to have a distinct identity or feature such as its
name or trademark that can help people to recognize it among its various competitors.
Nowadays, many individuals or businesses miss--use trademarks created by other organizations.
These are designed by other people to promote their products and services in the marketplace
and have legal rights on the same. In the case scenario given, Tablex is a public organisation that
is engaged in manufacturing of laptops - to provide innovative and creative services to the
society (Emerson and Willis, 2017). Therefore, the organisation selected the name Jingle for
their trademark and wants to register so that it can distinguish its products from among
competitors and avoid any misuse of this trade mark. Generally, various researchers are
presenting their viewpoints on the utilising of trademarks for organisations. Some author states
that an organisation or company can use trade-marks as their intellectual property from
consumptive activities. According to given scenario Tablex is concerned with misuse of their
trademark “Jingle”. Although legal bodies ensure that each and every formality are fulfilled
appropriately so that negative elements or outcomes can be controlled. The effective procedure
of registering trade mark is discussed below -
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Acquiring relevant and most accurate data or information related to registration of a trade
mark so that name of the brand can be defended. Trade-mark registration is very effective
technique to prevent any misuse of organisation's name and its functions. The procedure to
register is not much clear due to which people faces many problems or issues while registering a
trademark for their company or brand (Bonadio, 2017)1.
1. Acquiring trademark application- In order to get the application of registration an
individual need to visit the suitable website to move further with the process.
2. In second step, asked who is registering, either the company or individual themselves or
on the behalf of a person or business. It is also required to determine whether person is
authorized to perform such activity. If an individual is not eligible or belongs to legal
entity, then he or she should leave the exiting option and select the next one.
3. Filling important details is necessary to control mistakes and related probabilities, such as
arranging essential certificates, email addresses, information and so on.
4. Uploading certain image is also significant in case of advancement.
1 Bonadio, E., 2017. On the nature of trademark rights: Does trademark registration confer
positive or negative rights?
2
Illustration 1: Trademark registration process
Source: (Trademark registration procedure, 2016).

Once the above procedure is completed chosen organisation require to follow certain
processes for controlling possibilities of errors. There are various refusal elements or laws which
can be a barrier while registering for a trade-mark as mentioned below -
 fraudulent name or act can get rejected due to inappropriate terms in the name. (refusal
grounds).
 Section 5 of trademark act is highly concerned about the relative factors for refusal on
which specific trademarks can get rejected (Polott and Fertig, 2017)2.
 Probabilities of rejection by advisory bodies in case of any wrong data or information
(Refusal ground)
 Section 5 (1), 1994 stated that the trademark act is concerned about the disputed or
challenges where the signs, products or services are identical.
In context to this people believes that an organisation needs to clear about each and every
statement before taking any decision relate to the registration of trademark so that chances of
rejection can be minimized. In addition to this, the registration of specific services or products
are divided into different parts with respect to the international classification of goods or services
according to Nice agreement of section 40(1): rule 2(1) and rule 5. Major important for websites
for trade-mark offices are developed on the basis of products and services such as portal of UK
patent office.
The study concluded that Jingle trade-mark of Tablex company faced and encountered by
many rejections while applying in registration procedure. Furthermore, it is important for the
organisation to consider essential acts and laws along with the ruled developed with respect to
classification or registration of trademark. This states that the trademark of the company is
fulfilling each and every requirement related to approval for the registration of trademark. In
case authority or legal body reject and refuse to register trademark the company can appeal
against the refusal. In order to get a trade-mark registered it is very essential for the company to
ensure that name, design, shape or logo of the products or services are appropriate and meet the
criteria for getting approval for the registration.
2 Polott, A.B. and Fertig, R.E., 2017. 2017 Trademark Law Decisions of the Federal Circuit. Am.
UL Rev., 67, p.1355.
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2. Shape of Male Torso, for packaging of Men's Fragrance “Macho Balm” by Booties
Trademarks are really influencing the minds of entire society due to the increasing
demand of brand name among the modern customers. The legal system or bodies are involved in
representing various useful acts or laws related to the trademark registration challenges or issues.
For example – in the case given Booties company is going to launch the Macho Balm with a
shape of Male Torso that already utilized by Jean Paul Gaultier for the fragrance of Le Beau
Male. It refers to the trademark that is designed by the organization for the new product which is
initiated by the owner of the brand themselves (Christensen, 2018)3. Therefore, there is a high
possibility of negative consequences while application for registration process of Macho Balm
by Booties.
Effective procedure of registering trade-mark are as mentioned below -
1. Application required
2. Essential to read guidelines after the application process, such as details like logos,
slogan or any word that is needed to be registered. It is also important to mention clauses
related to the trademark.
3. Cost of the entire procedure
The fees of registration can be discussed as below -
Type of application Fee Additional charges
Standard (online) Approximately £170 Nearly £50
Right start (online) £200 (£100 up front plus £100
if an individual go forward
with registration)
£50 (£25 up front plus £25 if a
person or entity go ahead with
registration)
In the case of Booties, it is essential for the organization to consider specific intellectual
laws to overcome problems or challenges in registration process of Trademarks. Although, with
respect to laws Booties is using trademark belonging to Jean Paul Gaultier, thus registering
3 Christensen, J., 2018. The State of Trademark Law following B&B Hardware v. Hargis
Industries Inc.: Not as Groundbreaking as It May Appear. Wayne L. Rev., 64, p.249.
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authorities have the right to reject or refuse the application on the basis of refusal laws. Some of
the major refusal factors are as following -
 The main law of rejection can be copying trade-mark that already used by other business
or organization in the market (Phillips, 2017)4.
 Legal bodies applied various types of acts or laws related to intellectual property or
trademark for example section 5 are liable to control illegitimate activities.
Apart from this, section 3 is playing essential role in rejecting trade-mark and the
different rejection ground are mentioned below -
1. Particular mark is failing to fulfill the requirement of actual definition of trademark
2. The Trademark consist of typical character, it means fulfilling the expectation
appropriately (Snow, 2017)5.
3. It is developed and designed completely symbols or signs that is engaged in explaining
the features or qualities of specific products or services. case of Dyson Vacuum cleaner
(C-321/03) Dyson Ltd vs. registrar of trademarks in which Dyson tried to adopt a
trademark for an effective designs and his application get refused or rejected due to the
shape as well as improper protection. Another example is of Coca-cola bottle.
4. It consists a word which is uncommon.
5. It is essential to follow and use the actual shape which is needed for products (Geiger,
Machado and Pontes, 2017)6.
To identify the reason for above rejection, elements which can be determined that Booties
company has failed in fulfilling important terms and condition mentioned in section 3 of
trademark act. The section 3 of trademark act, states that it is essential for a company to consider
each and every requirement to register a specific trademark for their brand. Furthermore, it has
been identified that due to unacceptable shape of the product application by Booties company got
rejected. The registration also got refused due to unsuitable word in the trademark name. The
next refusal ground is that the trademark does not explain features or qualities of product.
4 Phillips, V.F., 2017. Beyond trademark: The Washington Redskins case and the search
for dignity. Chi.-Kent L. Rev.,92, p.1061.
5 Snow, N., 2017. Denying Trademark for Scandalous Speech.UCDL Rev., 51, p.2331.
6 Geiger, C. and Machado Pontes, L., 2017. Trade mark registration, public policy,
morality and fundamental rights.
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Therefore, potential refusal ground is applied on this case which caused rejection of the
registration application (Heath and Mace, 2017).
Respond to refusal on a trademark application
Each and every organization or business needs that their trademark is unique and strong
such as Apple, Nike or Kodak, but it is a fact that a trademark does not convey enough
information for a consumer to consider buying or purchasing it. Although, trademark protection
is not available for trademarks that are merely descriptive of the trademark owner's products and
services (Refusal of trademark registration, 2016)7. As a result, organizations spend a huge
amount of money and time in order to make balance between most abstract but strongest
trademarks. The USPTO will refuse to register a trademark on the principle register if it is
merely descriptive of the trademark belonging to organization's good and services. Once a
refusal is issued against an application the trademark has four significant options:
1. Appealing the examiner's refusal through office responses, action and an appeal to the
Appeal board or Trademark trail.
2. Accepting that the trademark is descriptive and provide evidence that it has acquired
distinctiveness under section 2(f) of the Lanham act.
3. Accept registration on the supplemental register
4. Abandon the application.
The effectiveness of the decision is based upon the descriptiveness, the past sales, marketing, the
length of use and budget of the trademark owner. The Booties company can therefore appeal
against refusal of trademark to the appealing authority if they think their trademark is suitable to
get the approval for registration.
The overall study is focusing on explaining a suitable process of getting application of
registering trade-marks. Legal bodies play an important role in the registration of trademarks or
hallmarks related to a business or company. Along with this, the report also determined that it is
essential to consider various legitimate laws affiliated with intellectual property like; Nice
classification of goods or services, to get a trademark registered for an organization or individual.
7 Refusal of trademark registration. 2016. [Online]. Available through:<https://www.gerbenlaw.com/blog/how-
to-respond-to-descriptiveness-refusal-on-a-trademark-application/>
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CONCLUSION
The above report concluded that application for registering a trademark is a complex and
systematic procedure that assist an organization to get a unique identity for their brand, goods or
services. There are various refusal evidences or elements for rejection of application related to
the registration and are needed to be considered while applying for trademark registration. There
are two cases discussed in this report, the first scenario was related to Tablex and other one was
in context to Booties. It was identified by the study that Tablex trademark fulfilled each and
every requirement needed to get registration of the trademark. On the other hand, application of
Booties company got rejected due to the refusal ground such as inappropriate work in the name,
inappropriate design of the product and lack of information presented by trademark.
Furthermore, it has been determined from the report that refusal grounds are also necessary for
creating a nation free from consumptive acts by fulfilling each or every feature in best possible
manner.
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REFERENCES
Books and Journals
Emerson, R.W. and Willis, C.R., 2017. International Franchise Trademark Registration: Legal
Regimes, Costs, and Consequences. Wake Forest L. Rev., 52, p.1.
Bonadio, E., 2017. On the nature of trademark rights: Does trademark registration confer
positive or negative rights?.
Polott, A.B. and Fertig, R.E., 2017. 2017 Trademark Law Decisions of the Federal Circuit. Am.
UL Rev., 67, p.1355.
Christensen, J., 2018. The State of Trademark Law following B&B Hardware v. Hargis
Industries Inc.: Not as Groundbreaking as It May Appear. Wayne L. Rev., 64, p.249.
Phillips, V.F., 2017. Beyond trademark: the Washington Redskins case and the search for
dignity. Chi.-Kent L. Rev.,92, p.1061.
Heath, D. and Mace, C., 2017. What’sa brand worth? Trademark protection, profits and product
quality. University of Utah working paper.
Snow, N., 2017. Denying Trademark for Scandalous Speech.UCDL Rev., 51, p.2331.
Geiger, C. and Machado Pontes, L., 2017. Trade mark registration, public policy, morality and
fundamental rights.
Online
Refusal of trademark registration. 2016. [Online]. Available
through:<https://www.gerbenlaw.com/blog/how-to-respond-to-descriptiveness-refusal-on-a-
trademark-application/>
Trademark registration procedure. 2016. [Online]. Available
through:<http://www.onlinetrademarkregistration.in/blog/regulations-trademark-law/trademark-
1-3/>
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