Trademark Protection and Registration Process
Trademark registration offers advantages, such as:
- It provides a visible deterrent and constructive notice to potential infringers;
- It permits citation of the trademark by the United States Patent and Trademark Office in decisions on applications to register potentially confusingly similar marks;
- It allows the trademark owner to grant a valid license to another party to use the trademark; and
- It serves as proof of the existence of prior right in opposition or infringement proceedings against third parties that are trying to register or use an identical or similar mark.
Who can register a trademark?
In general, any individual, organization, or governmental or business entity, including non-profit organizations, using (or proposing to use) a trademark to identify its goods or services is entitled to register a trademark.
How can I file an application?
Trademark applications can be filed nationally at the trademark office of the respective countries in which they are used or proposed to be used.
The Trademark Office
Steps taken by the Trademark Office to register a mark vary from country to country, but follow a similar pattern:
- Completed trademark application form.
- Initializing and recording application.
- Formal examination. The Office examines the application to make sure that it complies with administrative requirements and formalities.
- Substantive examination. A Trademark Attorney examines the application to verify whether it complies with all substantive requirements [example: classification, recitation of goods and services, potential conflict, etc.]
- Publication and opposition. In many countries, the trademark is published in a journal with a set period of time for third parties to oppose its registration.
- Proof of use. In many countries, including the United States, a trademark application can temporarily reserve the mark for a party having a bona fide intent to use the mark. Generally, if a mark is not used within a specified length of time (often between three and five years of its registration), a third party can apply to cancel the mark for non-use.
- Registration. If there are no grounds for refusal, the trademark is registered, and a Certificate of Registration is issued that is generally valid for ten [10] years.
- Continued Use and Incontestability Affidavit. The registration is valid only if there is continued use of the trademark between the fifth and sixth year. Specimens must be submitted and additional fees paid to maintain trademark rights.
- Renewal. The mark may be renewed indefinitely upon proof of continued use and required fees. Registration may be canceled entirely for certain goods and services if the trademark has not been used for a certain time period specified in the relevant trademark law.
How long does it take to register a trademark?
The time required for the registration of a trademark varies from country to country, generally ranging from one to three years depending, among other things, on whether the Office conducts substantive examination.
What are the costs associated with trademark registration?
There are costs for conducting a trademark search. There are also costs associated with the registration process which vary depending on the categories of products and services. Government filing fees must be paid directly to the Trademark Office at various stages of the registration process in addition to professional fees if assisted by an attorney.
Do I need an attorney to assist in trademark registration?
Most trademark registries do not require trademark applicants to be represented by an attorney. However, consulting with legal counsel to assist can save significant time, cost, and energy in conducting searches and avoiding refusal of registration.