In our past posts, we’ve covered two essential steps to qualify your organization for a VMC certificate:

• How to get your logo into the correct format
• How to become DMARC/BIMI compliant

 

This week, we’ll go over another equally critical step: How to check if your brand logo is a registered trademark and apply for a registered trademark if it is not.

Note: We’re not legal experts (but we do have a few on staff), so this is by no means meant to be an exhaustive tutorial or legal advice. Think of this as more of a reminder to complete this step before you apply for a VMC.

What does a registered trademark have to do with Verified Mark Certificates?

The answer is pretty simple. A logo that is a registered trademark is harder to spoof because it’s been vetted on the state, federal or international level. Furthermore, the BIMI standard requires organizations to have a logo that is a registered trademark so that they can be issued a VMC.

How do I check if my logo is already trademarked?

The short answer is to ask your legal team if your logo is registered as a trademark with a recognized trademark office. If you don’t have a legal team, check on the World Intellectual Property Organization’s (WIPO) website and search for your organization’s logo. If your organization’s logo can be found and shows as a valid and active registered trademark, it means that you have a logo that is a registered trademark in the jurisdiction indicated.

The ® symbol indicates a registered trademark

Which trademark offices are approved for BIMI/VMC?

Currently, the VMC certificate guidelines officially recognizes the following intellectual property offices:

• United States Patent and Trademark Office
• Canadian Intellectual Property Office
• European Union Intellectual Property Office
• UK Intellectual Property Office
• Deutsches Patent- und Markenamt
• Japan Trademark Office
• Spanish Patent and Trademark Office O.A.
• IP Australia
• Intellectual Property India
• Korean Intellectual Property Office
• Instituto Nacional da Propriedade Industrial
• French Institut National de la Propriete Industrielle
• Benelux Office for Intellectual Property
• Denmark Ministry of Culture
• Swedish Intellectual Property Office
• Swiss Federal Institute of Intellectual Property
• Intellectual Property Office of New Zealand

To qualify for a VMC, your organization has to trademark their logo with one of the intellectual property offices above, if that hasn’t been done already.

We recognize that this initial list does not reflect a robust set of global organizations, and DigiCert has requested the inclusion of more intellectual property offices from the WIPO list.

I don’t have a logo that is a registered trademark. What’s next?

The shortest answer: Talk to your legal team.

Don’t have a legal team? You don’t necessarily need one if you live in the United States, but the USPTO strongly recommends going through the process with legal representation. So do we.

Next, you’ll want to make sure your mark is registerable and in the correct format. Here is a helpful video from USPTO on how to prepare your mark for filing with the USPTO:

https://www.uspto.gov/learning-and-resources/uspto-videos/basic-facts-selecting-mark

After you’re sure the mark qualifies for a trademark, you’ll want to do the following:

1. Clearly identify the goods and services you provide. This is very important to ensure your logo meets trademark guidelines.
2. Perform a search in the relevant jurisdiction(s) to make sure your mark isn’t in conflict with any other registered marks.
3. Gather the necessary personal information for filing your application.
4. Begin the filing process (or, ideally, have your patent/trademark attorney handle that for you) with the USPTO or other intellectual property office. Keep in mind there are strict deadlines and long turnaround times, so this is something you’ll want to start as soon as possible.

After filing, you’ll work with the assigned examiner from the USPTO or other intellectual property office, who will determine if you mark is able to be trademarked or not. Be sure to respond in a timely fashion to any requests from the trademarking authority—they’ll cancel your application on the spot if you miss certain deadlines.

Finally, assuming no objections have been raised by the examiner, you’ll receive notice of approval or denial of your request.

What if I am outside the U.S. and my country’s intellectual property office isn’t recognized yet?

What we can tell you is what we have been told: when we validate your logo for inclusion in a VMC we must find it registered with one of the intellectual property offices listed above. We are not familiar with the laws of each country and how to register your logo as a trademark beyond what we’ve shared above. That said, if your logo is registered as an active trademark in one of the current recognized intellectual property offices, then we will use that source for confirming validation.

We’re expecting to see some changes after the pilot ends, but at this time this is where we stand. We’ll update and communicate once we learn anything new.