Registration is a legal means of asserting ownership of a mark which has probably been in use "in commerce" and of providing protection for that mark. While use is a prerequisite to obtaining a registration, it is not a prerequisite to filing a trademark application. In order to file an application, a party need only have a bona fide intent to use the mark in interstate commerce. However, a registration will not issue until such use takes place. The benefit of filing an intent to use application is that the applicant's filing date serves as its priority date, not the subsequent date of first use.
In the context of IEEE, the "mark" usually is a publication and/or conference title, an abbreviation or a special identifying design like the diamond-shaped IEEE logo. Unlike copyright registration - a relatively simple process handled by this office and the U.S. Copyright Office - a registration of a mark is a rather lengthy process handled by this office via our copyright and trademark attorneys Dorsey & Whitney for a minimum of $1500. Registration via our attorneys includes filing an intent-to-use application (if appropriate) and a search to assure that the mark - or something confusingly similar - is not already in use.
Is registration worth the bother? For some conference and publication titles, especially those in fast moving and competitive areas, every kind of protection should probably be pursued. Registration presumably is a deterrent to the misuse of a mark and certainly provides significant defense if legal action against an infringer becomes necessary. Similarly, such registration will uncover any potential problems and avoid costly litigation.
Are all titles registerable? No. Many IEEE titles are made up of what our attorneys call "words of art." This means words or phrases so commonly used in a particular discipline that they have descriptive value only and usually can't be uniquely owned.
What about abbreviations? An abbreviation may be registerable even if a full title isn't. Registration of an abbreviation doesn't protect the words which have been abbreviated and it locks the sponsor into an obligation to use the registered abbreviation if the sponsor wishes to maintain the benefits of registration, although this does not preclude the sponsor from all use of the full title.
What about logos? Logos may be used and registered as trademarks or service marks if they are not likely to cause confusion with any other mark. Like all other marks, a logo must be provably used or a party must have a bona fide intent to make such use before an application to register the logo may be filed.
How long does it take? At least 18 months from the filing date. A search (possibly with complications) prior to filing can add four-six months.
Are other forms of protection available? Yes. For example: 1) Common law protects titles and logos which are in use, even if they are not registered. 2) The longer continuous and unchanged use can be proved, the stronger the protection. 3) The use of "IEEE" in the title of a conference and on the conference publication offers excellent protection. The stronger the tie to IEEE, the greater the protection. 4) Especially for those conferences seeking extra protection, a signed document is recommended in which the volunteers in charge of a conference and/or publication agree formally that they recognize IEEE's ownership of the conference and/or publication.
What else is important? Close cooperation between the IEEE IPR Office and the sponsor of the mark is essential. Specific information on the type of use and first date of use will be required from the sponsor as will samples of the mark and, in the case of a design, an original drawing. Because of the information and material required and the time and money involved, we will need a signed agreement for each item to be registered. (See link below.) Also, because the registration process is lengthy and can require a number of go/no go decisions along the way, we will also need one authorized (and willing!) contact to speak for each organizational unit. The IEEE IPR Office will reciprocate by providing efficient and courteous service, by maintaining careful records and files, and by being available for help and advice should it be needed in the future.
1. Invite all involved in making the decision on what or how to register to read both this memo and the form (PDF, 237 KB). (Copies will be sent on request to anyone you specify.)
2. If you would like a preliminary decision as to whether or not something is registerable, call or write the IEEE IPR Office, who will get a reading from our attorneys.
3. Note that, in addition to the financial commitment you will be making on behalf of your organizational unit, registration also results in an obligation to use the registered mark continuously, carefully and without substantial change if you wish to obtain the full legal benefit of a registration.
4. When you know precisely what you want to register, which of the two registration procedures best suits your needs, have agreed upon a contact person that IEEE IPR Office can reliably call upon whenever necessary, and have collected the necessary information and samples, then you should print out and complete the form (PDF, 237 KB) and send it to the IEEE IPR Office along with appropriate attachments.
5. The IEEE IPR Office will acknowledge receipt and from that point will keep the contact (and any others specified) informed of the progress of the application.
6. All accounting will normally be handled internally with filing fees and attorneys bills charged against the appropriate account of the sponsoring organizational unit. Let the IEEE IPR Office know if further details will be needed and, if so, by whom.
7. When registration has been completed, all who need to know will be advised and information will be given on the future use of the mark.