Tim Elliot
Okay. I just wanted to say, we’ve got a list of questions coming in. We’re live on Facebook, TikTok, and Instagram while recording this podcast. I thought we could answer a couple of these now. You kind of already addressed this: if I trademark my product in the U.S., does that apply here as well? The answer is yes, as long as you’ve applied locally. Shortly, I’ll ask you to explain how to register a trademark here, Ludmila, so we can look at the nuts and bolts. But here’s a fun one: can you trademark a cake recipe?
Ludmila Yamalova
Interesting question! Not the recipe itself because trademarks focus on creative and visual elements of intellectual property—things like the name, how it’s spelled or written, the colors, and the logo associated with it. That’s what trademarks protect, not the ingredients or the step-by-step instructions of a recipe.
A recipe, generally speaking, would fall under a different category of intellectual property, such as copyright. In some rare cases, recipes have also been patented, but this usually involves a scientific or chemical aspect to the recipe. For example, if there’s a unique chemical formulation that’s part of the recipe, it could be patented. There have been cases where recipes, like a particular Japanese sponge cake, were patented due to their innovative components.
So, trademarks protect the branding aspect of a recipe—the name, logo, or tagline—not the recipe itself.
Tim Elliot
Let’s take a hypothetical example: Ludmila’s Legal Cupcake Store, with a tagline like “Tastier than the law and even better than you can imagine.” You’d trademark the name and tagline, but not the cupcake or recipe itself, right? I’m sticking with cakes here because I like cake.
Ludmila Yamalova
I like the sound of that tagline! We might need to jot that down and revisit it after the podcast. You’d trademark the name, logo, and any unique design elements, like a cupcake with a gavel or scales of justice. That’s the creative and visual aspect trademarks protect. The actual recipe—how much flour or sugar to use—falls under copyright, not trademarks.
Tim Elliot
The scales of justice would work perfectly with two cupcakes, by the way.
Ludmila Yamalova
I like the visual! We’ll have to discuss this further offline before someone else trademarks it.
Tim Elliot
Thank you, Ludmila. Let’s take another question. This is Lawgical, the Yamalova & Plewka podcast, and today we’re talking about trademarks. Someone asks: what are the possible grounds for rejection or refusal of a trademark application for a product or service?
Ludmila Yamalova
There are many potential grounds for rejection. One is that the trademark is too generic or ordinary. You cannot trademark a common name or term already in the public domain. For example, I’d love to trademark my own name, but it’s not unique to me, so it wouldn’t qualify. Trademarks must have distinguishing characteristics to stand out from others.
Another restriction is on public symbols or words. For instance, you can’t trademark city or country names since they’re public property. Trademarks also cannot mislead or misrepresent. If you trademark a name implying you specialize in space exploration but use it for legal services, it would be misleading.
The Madonna example is interesting. While the name itself isn’t unique, Madonna as a performer and cultural icon is distinct. Her legacy, music, and persona give her the right to trademark certain aspects of that name.
Additionally, trademarks must be actively used. If a trademark remains dormant, it could lose its protection. For example, if two trademarks exist but only one is actively used, that one might take precedence.
Tim Elliot
It’s a tangled web you’re weaving! But the Madonna example is compelling—her name is more than just a name. It’s a brand and a cultural representation.
Ludmila Yamalova
Exactly. It’s about what you’ve built around the trademark—her performances, music, and investments. That kind of equity justifies trademark protection for her name and brand.
Tim Elliot
Here’s another question from Facebook, Instagram, and TikTok: can trademarks be issued on a geographic basis? For example, if one exists in Dubai, can it also exist under a different owner in the U.S.?
Ludmila Yamalova
Great question. To explain this, let’s look at the Nice Classification system and the Madrid Protocol, which govern international trademarks.
The Nice Classification system harmonizes trademark registration by creating categories for goods and services. For example, food products, pharmaceuticals, and clothing each have specific categories. Countries that are signatories to this system use these classifications, ensuring consistency. The UAE adopted this system in 2021 under Federal Decree Law 156.
The Madrid Protocol, on the other hand, allows trademark owners to protect their trademarks internationally. It enables applicants to register their trademarks in multiple member states through the World Intellectual Property Organization (WIPO). However, protection isn’t automatic. If you have a U.S. trademark, you must actively apply through WIPO to register it in other countries, like the UAE.
The UAE joined the Madrid Protocol in 2021 under Federal Decree Law 67. While the system is still being implemented, it means that a trademark registered in the UAE can now be extended to other member states, and vice versa.
Tim Elliot
That’s a useful system! It also helps ensure originality, right? You can check if your trademark is already in use.
Ludmila Yamalova
Yes, but there are complexities. For instance, if you register your U.S. trademark under the Madrid Protocol and try to extend it to the UAE, you might find a similar trademark already in use locally. This is where challenges come into play. Trademarks are often published to allow others to object. Even if your trademark exists in multiple countries, it may face issues in others due to prior use or registration.
Tim Elliot
So it’s not just about who registered it first but also about how it’s used and where?
Ludmila Yamalova
Correct. Priority can depend on use, timing, and even how the trademark aligns with its intended purpose. Courts often analyze these factors to decide which trademark takes precedence. In some cases, similar trademarks may coexist in different countries, but their reach is limited to their respective regions.
Tim Elliot
So, do your research and know your stuff!
Ludmila Yamalova
Absolutely. Understanding trademark systems like the Nice Classification and the Madrid Protocol can save time, money, and potential disputes.
