Are TM registration must for Assets within a Brand?

[prasenjit]

We are a new Media and Entertainment firm based in India. We have 30 cartoon characters and 2 stories under our assets. Our attorney has applied for TM for the brand logo and characters & also has applied for copyrights for stories in India only. ie. in all 31 TM applications and 2 copyright filing.

We are interested in entering US market.

Is it enough only to apply ONLY for TM of Brand logo in US?
or
Do we also have to apply for TM of all the 30 characters and copyrighting of stories in US?

 

[FlyingRon]

There's definitely a language problem here. You don't have to "file" for copyrights. India is a Berne signatory as is the US. The fact you created the works in tangible form is enough to establish copyright. Berne prohibits any additional restrictions on right creation. Now it may give you some additional statutory protections above copyright to do registration in India, as it does, in the US, but you have protection in both countries NOW. You are eligible to register the works at the US Copyright office to extend those protections (information on what those are is available here: http://www.copyright.gov/circs/circ1.pdf, see the section on registration).

Trademark rights are established by their use in commerce. Just because you have a character doesn't mean you are eligible for trademark rights (whether you pursue registration or not). You have to use the mark as a brand in commerce to establish (or be eligible for such rights). Many people do use their characters as brands in their own right (think of just about every Disney character). Now for registration of foreign trademarks, there are different treaties. Unfortunately, India is NOT a signatory of the Madrid Protocol. You can still apply to the US Patent and Trademark Office for registration however.

 

[prasenjit]

Hi FlyingRon,
Thanks for the response. The link was quite useful. Pls pardon my mistake on misquoting copyrights.
So, Pls correct me if I got it wrong,
1. Characters by themselves need not be eligible for TM? If No, How to decide whether to go for Character TM or not?
2. Also, Does applying for Brand Logo TM automatically extends the protection to the characters within the Brand?

I understand the limitation of India not being under Madrid Protocol, hence we intend to go via one of our sister firms in Singapore through rights transfer.

 

[quincy]

prasenjit, because you are a new firm, you would probably be wise to seek out the help of an attorney in India for advice on protecting your characters and stories beyond the automatic copyright protection offered them both in India and the U.S.

To add to FlyingRon's link to the U.S. copyright office website (http://www.copyright.gov), here is a link to the U.S. Patent and Trademark Office website, for information on registering your firm's trademark in the U.S: http://www.uspto.gov.

Good luck.