General Trademark Process
Information is general and may not apply equally to all countries. This information is not legal advice or a legal opinion.
Why Should I Have A Trademark Search Performed First ?
Most of the industrialized nations have put at least some sort of trademark search on-line, and generally it is free. So why bother to hire a specialist when you can do it yourself ?
Because, a trademark search is so much more than just inputting your potential new brand name into a search engine. Maybe there are no exact matches to your name, but what about similar names? Or an identical name on a similar product ?
The trademark office does not look at only the goods for which you apply, they search under the entire class code. The trademark office also searches on similar class codes.
For example: Shampoo and body lotion both fall under the same class code, 003, and in some circumstance could be considered direct hits to each other. If the shampoo is medicated it falls into class 005 but could still possibly be considered a direct hit to body lotion in 003.
And what about colorful spellings ? Elephant = Oliphant. Did your search at the trademark office include non-standard spelling options ? Or in this case, translations ?
Our trademark searches provide clear, concise and accurate trademark information based on search variations on the exact trademark as well as “phonetic”, “colorful” and “foreign translation” possibilities on the main words that make up your trademark name or slogan, where available. In some countries a short opinion is provided.
An up to date search is a small but wise investment to protect a larger concern, namely the government fee per class code that is forfeited if the trademark office rejects your application due to its mere similarity to an already registered or pending trademark.
And don’t you want to know who might be using a similar brand name? That’s just good marketing.
Should I Get Trademark Registration On My Design Mark ?
It really depends on your budget.
If you can afford to file both the words in your brand name and the logo (design mark) as separate trademark applications, then you should do so.
It is common for trademark owners to have to re-file their trademarks from scratch at renewal time because their design has changed, and the logo that is registered is no longer being used.
Other considerations when filing the trademark word and logo together in a single application:
When you file the trademark word and design mark together, the principal protection is on the word portion, and the design portion is treated more as reference rather than being given full blown trademark protection in its own right.
When you file the trademark word and design mark together, if your logo changes (ever), because you have “materially altered the trademark as filed”, you are required by law to change your trademark registration accordingly by either filing a new application from scratch or possibly filing an amendment. This can be costly in terms of money and trademark rights.
And for those of you who cannot afford to file words and logo separately, you might consider only filing to protect your design mark if you think it will become unique on its own without the word portion (Nike Swoosh, A&W Mug, At&t Globe, McDonald Golden Arches, Puma Cat, etc.).
Logos very often change between trademark filing and renewal time years later, but the words in your brand name generally do not.
Is My Logo Design The Same As My Trademark Sample ?
The sample is required in only some countries to prove the trademark is being used in commerce.
The logo is NOT your trademark sample. The logo is the art work that depicts your company or product name, also called a design mark. Imagine the Golden Arches or the Polo player on his horse…you know what companies these design marks depict and what products they sell without seeing the words in the brand name.
Examples of acceptable trademark samples covering PRODUCT (classes 1-34)
A photo of your packaged product showing the trademark (the brand name/slogan/logo)
A website page or catalog where your product can be viewed and/or ordered
A photo of a clothing/jewelry/handbag label or hang tag
Examples of acceptable service mark samples covering SERVICES (classes 35-45)
A website advertising your service mark (the company name/slogan/logo)
A document such as a pamphlet or brochure advertising the service
Other advertising such as might be found in a magazine, yellow page ad, or coupon
Business cards or company letterhead if both the trademark and service provided is clearly printed on the card or letterhead
I Am Not Yet Selling. Can I Register My Trademark Without It Being “In Use” ?
In most countries, yes.
An ITU trademark filing (Intent to Use) is a way of protecting (“saving”) your trademark before you actually start using the brand.
An ITU trademark filing can provide an additional 6-36 months in additional time, in which to submit a sample. A trademark owner can file some extensions usually (it varies by country). Each trademark extension filing costs additional fees, as does the statement of use filing, which can be made at various times after filing.
Any similar trademark that enters the system after yours must wait for you to either confirm you are using your brand name or you let the trademark go abandoned (by filing nothing).
What Is The General Trademark Registration Process ?
1. We process your request within 3-5 working days of receiving your complete order.
2. Upon submission to the trademark office, a filing confirmation is received back. We provide the filing receipt as soon as it is available (which varies between countries from instantaneous to several weeks).
3. In xx months the trademark application is reviewed by the examining attorney, with two possible actions
3.1 The examining attorney generates an “Office Action” to either: Most complex issues require additional legal filings and the services of an attorney will be required.
3.1.1 Request clerical changes to the trademark application; or,
3.1.2 Refuse the trademark application, which can be clerical or complete
4. The examining attorney approves the trademark for the “Opposition Phase”.
5. In xx months the trademark application is published in the trademark gazette for xx days (30, 60 or 90 depending on country), with two possible outcomes:
5.1 Trademark opposition is filed and the services of an attorney will be required.
5.2 NO trademark Opposition is filed and the trademark will register within xx months.
6. In xx months the trademark is approved for registration, with two possible outcomes:
6.1 A final title registration fee is due, after payment of which the trademark moves to registration after which; or
6.2 No final fee is due and the title certificate is issued.
NOTE—in some countries (particularly in Latin America) the “Opposition Phase” happens first and the review happens after that, some other countries have either no opposition phase or no similarity review.
NOTE—some countries no longer issue paper trademark certificates (such as EU).
When Do I Have To Renew My Trademark ?
Each country has its own “renewal” policy, but the majority of the countries require trademark renewals every 10 years.
Here are some exceptions:
1. USA 5th year, 10th year (samples must be submitted that match your trademark as registered)
2. Philippines 3rd year, 10th year
3. Saudi Arabia 10th Hegira year (which is 9 years 9 months)
NOTE—in some countries the years until renewal are counted from date of application, in other countries from date of registration.
Should I Do Anything Else to Protect My Trademark ?
Yes. Trademark Watching.
In some countries, thousands of trademark applications are published in the trademark gazette each week/month. This is the “Opposition Phase” that your own trademark must pass through in order to achieve registration.
If trademark watching brings up an exact match to your trademark or possibly even something just a little too similar to your trademark, then you might want to consider filing an opposition against it. I work with lawyers around the world who could assist if necessary.
There is no such thing as the trademark police. The examining attorney at the trademark office performs his/her own search and forms a legal opinion, but it is risky to leave the policing of your brand name in the hands of a single government examiner.
Trademark watching allows you to make your own decision by answering this question:
Will my customers buy the other guy’s product if they are sitting next to each other on the shelf?
You should also consider the fact that if someone out there is using a trademark similar to yours, and you do not take steps to stop them from doing so, YOUR trademark becomes weaker in the eyes of the trademark office and its laws. The longer you allow another trademark to coexist with yours, whether you have made a specific decision to do so, or not, the weaker your trademark becomes with each passing year.
Furthermore, by allowing one trademark to coexist, your ability to fight (and win) a second infringing trademark is reduced, by mere existence and tacit acceptance of the first.
What If I Already Have A Foreign Trademark?
If you already have the trademark registered OR pending in a foreign country, this could help you get your trademark registration for your brand name in another country.
Priority Registration This allows the applicant to claim an earlier filing date in the new country if the applicant has also already filed a trademark application in a treaty member country within the last 6 months. The owner’s country of origin must also be a treaty member country. Prior Foreign Registration This is different than a Priority Registration.You can base your trademark on an already registered foreign trademark as long as the foreign registered trademark is in good standing. Most countries trademark offices require a copy of the foreign registration certificate to accompany the application form. The new trademark filing must be identical to the foreign registration on which it is being based (i.e., goods and services, owner, and the trademark itself). If the registration certificate is in any language other than English, a certified translation must be included with the copy of the foreign registration.
So What Does “Priority” Really Mean?
Here’s an example of how it can be used.
- You are a company based in Germany. You filed an EU trademark on June 1st
- Your distribution company in USA filed the same trademark (YOUR trademark) in the USA in October
- You have 6 months (until December 1st) to file an application in the USA and claim Priority, based on your filing in Germany on June 1st – USPTO will treat your trademark as if it were actually filed on June 1st not December 1st
- Your distributor’s pending trademark in USA will be put on hold until your trademark is accepted or rejected by the trademark office, regardless of the fact that he submitted his application in the US several months before you actually did
- If your trademark is accepted then you have beaten him, even though you filed at a later date
Here again is a reason to have Trademark Watching service, especially if you have trademarks in more than one country.
Is There Such Thing As A Worldwide Trademark?
No.
Though, in some markets there are agreements that bind more than one country under a single application, such as:
- The Andean Pact covering several South American Countries
- The European Union “Community Trade Mark” covering all member countries
- The Madrid Protocol covering several dozen countries
- The WIPO (World Intellectual Property Organization)
When Can I Put The TM, SM, Or ® Symbol By My Trademark?
The TM is for PENDING Trademarks (anything in class 001 to 034, and covers PRODUCTS)
The SM is for PENDING Servicemarks (anything in class 035-045, and covers SERVICES). You can put the appropriate symbol next to the trademark for the covered goods and/or services as soon as you have received your serial number from trademark office.
The ® is for REGISTERED trademarks AND servicemarks (all goods and/or services). You can put this symbol next to the trademark for the covered goods and/or services as soon as your trademark has received a registration number.
Information is general and may not apply equally to all countries. This information is not legal advice or a legal opinion.
Why Should I Have A Trademark Search Performed First ?
Most of the industrialized nations have put at least some sort of trademark search on-line, and generally it is free. So why bother to hire a specialist when you can do it yourself ?
Because, a trademark search is so much more than just inputting your potential new brand name into a search engine. Maybe there are no exact matches to your name, but what about similar names? Or an identical name on a similar product ?
The trademark office does not look at only the goods for which you apply, they search under the entire class code. The trademark office also searches on similar class codes.
For example: Shampoo and body lotion both fall under the same class code, 003, and in some circumstance could be considered direct hits to each other. If the shampoo is medicated it falls into class 005 but could still possibly be considered a direct hit to body lotion in 003.
And what about colorful spellings ? Elephant = Oliphant. Did your search at the trademark office include non-standard spelling options ? Or in this case, translations ?
Our trademark searches provide clear, concise and accurate trademark information based on search variations on the exact trademark as well as “phonetic”, “colorful” and “foreign translation” possibilities on the main words that make up your trademark name or slogan, where available. In some countries a short opinion is provided.
An up to date search is a small but wise investment to protect a larger concern, namely the government fee per class code that is forfeited if the trademark office rejects your application due to its mere similarity to an already registered or pending trademark.
And don’t you want to know who might be using a similar brand name? That’s just good marketing.
Should I Get Trademark Registration On My Design Mark ?
It really depends on your budget.
If you can afford to file both the words in your brand name and the logo (design mark) as separate trademark applications, then you should do so.
It is common for trademark owners to have to re-file their trademarks from scratch at renewal time because their design has changed, and the logo that is registered is no longer being used.
Other considerations when filing the trademark word and logo together in a single application:
When you file the trademark word and design mark together, the principal protection is on the word portion, and the design portion is treated more as reference rather than being given full blown trademark protection in its own right.
When you file the trademark word and design mark together, if your logo changes (ever), because you have “materially altered the trademark as filed”, you are required by law to change your trademark registration accordingly by either filing a new application from scratch or possibly filing an amendment. This can be costly in terms of money and trademark rights.
And for those of you who cannot afford to file words and logo separately, you might consider only filing to protect your design mark if you think it will become unique on its own without the word portion (Nike Swoosh, A&W Mug, At&t Globe, McDonald Golden Arches, Puma Cat, etc.).
Logos very often change between trademark filing and renewal time years later, but the words in your brand name generally do not.
Is My Logo Design The Same As My Trademark Sample ?
The sample is required in only some countries to prove the trademark is being used in commerce.
The logo is NOT your trademark sample. The logo is the art work that depicts your company or product name, also called a design mark. Imagine the Golden Arches or the Polo player on his horse…you know what companies these design marks depict and what products they sell without seeing the words in the brand name.
Examples of acceptable trademark samples covering PRODUCT (classes 1-34)
A photo of your packaged product showing the trademark (the brand name/slogan/logo)
A website page or catalog where your product can be viewed and/or ordered
A photo of a clothing/jewelry/handbag label or hang tag
Examples of acceptable service mark samples covering SERVICES (classes 35-45)
A website advertising your service mark (the company name/slogan/logo)
A document such as a pamphlet or brochure advertising the service
Other advertising such as might be found in a magazine, yellow page ad, or coupon
Business cards or company letterhead if both the trademark and service provided is clearly printed on the card or letterhead
I Am Not Yet Selling. Can I Register My Trademark Without It Being “In Use” ?
In most countries, yes.
An ITU trademark filing (Intent to Use) is a way of protecting (“saving”) your trademark before you actually start using the brand.
An ITU trademark filing can provide an additional 6-36 months in additional time, in which to submit a sample. A trademark owner can file some extensions usually (it varies by country). Each trademark extension filing costs additional fees, as does the statement of use filing, which can be made at various times after filing.
Any similar trademark that enters the system after yours must wait for you to either confirm you are using your brand name or you let the trademark go abandoned (by filing nothing).
What Is The General Trademark Registration Process ?
1. We process your request within 3-5 working days of receiving your complete order.
2. Upon submission to the trademark office, a filing confirmation is received back. We provide the filing receipt as soon as it is available (which varies between countries from instantaneous to several weeks).
3. In xx months the trademark application is reviewed by the examining attorney, with two possible actions
3.1 The examining attorney generates an “Office Action” to either: Most complex issues require additional legal filings and the services of an attorney will be required.
3.1.1 Request clerical changes to the trademark application; or,
3.1.2 Refuse the trademark application, which can be clerical or complete
4. The examining attorney approves the trademark for the “Opposition Phase”.
5. In xx months the trademark application is published in the trademark gazette for xx days (30, 60 or 90 depending on country), with two possible outcomes:
5.1 Trademark opposition is filed and the services of an attorney will be required.
5.2 NO trademark Opposition is filed and the trademark will register within xx months.
6. In xx months the trademark is approved for registration, with two possible outcomes:
6.1 A final title registration fee is due, after payment of which the trademark moves to registration after which; or
6.2 No final fee is due and the title certificate is issued.
NOTE—in some countries (particularly in Latin America) the “Opposition Phase” happens first and the review happens after that, some other countries have either no opposition phase or no similarity review.
NOTE—some countries no longer issue paper trademark certificates (such as EU).
When Do I Have To Renew My Trademark ?
Each country has its own “renewal” policy, but the majority of the countries require trademark renewals every 10 years.
Here are some exceptions:
1. USA 5th year, 10th year (samples must be submitted that match your trademark as registered)
2. Philippines 3rd year, 10th year
3. Saudi Arabia 10th Hegira year (which is 9 years 9 months)
NOTE—in some countries the years until renewal are counted from date of application, in other countries from date of registration.
Should I Do Anything Else to Protect My Trademark ?
Yes. Trademark Watching.
In some countries, thousands of trademark applications are published in the trademark gazette each week/month. This is the “Opposition Phase” that your own trademark must pass through in order to achieve registration.
If trademark watching brings up an exact match to your trademark or possibly even something just a little too similar to your trademark, then you might want to consider filing an opposition against it. I work with lawyers around the world who could assist if necessary.
There is no such thing as the trademark police. The examining attorney at the trademark office performs his/her own search and forms a legal opinion, but it is risky to leave the policing of your brand name in the hands of a single government examiner.
Trademark watching allows you to make your own decision by answering this question:
Will my customers buy the other guy’s product if they are sitting next to each other on the shelf?
You should also consider the fact that if someone out there is using a trademark similar to yours, and you do not take steps to stop them from doing so, YOUR trademark becomes weaker in the eyes of the trademark office and its laws. The longer you allow another trademark to coexist with yours, whether you have made a specific decision to do so, or not, the weaker your trademark becomes with each passing year.
Furthermore, by allowing one trademark to coexist, your ability to fight (and win) a second infringing trademark is reduced, by mere existence and tacit acceptance of the first.
What If I Already Have A Foreign Trademark?
If you already have the trademark registered OR pending in a foreign country, this could help you get your trademark registration for your brand name in another country.
Priority Registration This allows the applicant to claim an earlier filing date in the new country if the applicant has also already filed a trademark application in a treaty member country within the last 6 months. The owner’s country of origin must also be a treaty member country. Prior Foreign Registration This is different than a Priority Registration.You can base your trademark on an already registered foreign trademark as long as the foreign registered trademark is in good standing. Most countries trademark offices require a copy of the foreign registration certificate to accompany the application form. The new trademark filing must be identical to the foreign registration on which it is being based (i.e., goods and services, owner, and the trademark itself). If the registration certificate is in any language other than English, a certified translation must be included with the copy of the foreign registration.
So What Does “Priority” Really Mean?
Here’s an example of how it can be used.
- You are a company based in Germany. You filed an EU trademark on June 1st
- Your distribution company in USA filed the same trademark (YOUR trademark) in the USA in October
- You have 6 months (until December 1st) to file an application in the USA and claim Priority, based on your filing in Germany on June 1st – USPTO will treat your trademark as if it were actually filed on June 1st not December 1st
- Your distributor’s pending trademark in USA will be put on hold until your trademark is accepted or rejected by the trademark office, regardless of the fact that he submitted his application in the US several months before you actually did
- If your trademark is accepted then you have beaten him, even though you filed at a later date
Here again is a reason to have Trademark Watching service, especially if you have trademarks in more than one country.
Is There Such Thing As A Worldwide Trademark?
No.
Though, in some markets there are agreements that bind more than one country under a single application, such as:
- The Andean Pact covering several South American Countries
- The European Union “Community Trade Mark” covering all member countries
- The Madrid Protocol covering several dozen countries
- The WIPO (World Intellectual Property Organization)
When Can I Put The TM, SM, Or ® Symbol By My Trademark?
The TM is for PENDING Trademarks (anything in class 001 to 034, and covers PRODUCTS)
The SM is for PENDING Servicemarks (anything in class 035-045, and covers SERVICES). You can put the appropriate symbol next to the trademark for the covered goods and/or services as soon as you have received your serial number from trademark office.
The ® is for REGISTERED trademarks AND servicemarks (all goods and/or services). You can put this symbol next to the trademark for the covered goods and/or services as soon as your trademark has received a registration number.
