Trade mark applications and registration

Disclaimer: Whilst all the information in this help section has been prepared by qualified attorneys, it does not constitute, and must not be understood to constitute, legal advice. You should always seek an attorney opinion.

How do I find out if my trademark can be registered?

Before applying to register a trade mark it is advisable you ask a US qualified attorney carry out a 'clearance search' to see if there are any obvious reasons why the name cannot be registered - otherwise the application could end up in expensive failure. 

How long does the trademark registration process take?

Applications to register a US trademark take approximately nine to twelve months if the application is accepted by the US examiners and is not opposed by any other trademark owner. Applications with oppositions can take up to an additional six months to complete, depending on the proceedings.

 

What do I get from the attorneys at the law firm of JW if I ask them to advise me?

The US qualified attorneys at WJ can advise on all aspects of trademark law and registration. They recommend carrying out full clearance searches to identify any issues that might affect whether your application will progress through to a successful registration. As the registry never refund the official fees the costs from putting in an application 'blind' that fails can be substantial.

How does the US trademark registration process work?


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The US trademark registration process in brief:

  1. You apply online via the Trade Mark Direct website;
  2. Our trade mark experts perform legal checks on your application;
  3. If your application passes our checks, we file your application with the registry;
  4. The Intellectual Property Office (IPO) confirms receipt of your trade mark application within six days;
  5. An IPO examiner reports on your application within two months;
  6. If your application is accepted, your details are published in the trade mark journal within three weeks;
  7. After three weeks, if no oppositions are registered, your registration certificate is issued.}

How do I apply for an international trademark?

Trademark Direct can help you protect your trademark in a huge range of countries worldwide. Contact us to discuss your specific requirements and our client representatives will be able to work out the cheapest and quickest way in which to take your applications forward.

How do I register a logo as a trademark?

A logo trademark application has to pass additional criteria before it can be registered: for example, a logo trademark cannot be:

  • A three dimensional shape which is typical of the goods you sell, has a function or adds value to the goods;
  • A specially protected emblem, such as flags, royal insignia and the rings of the Olympic Games;
  • A mark that is deceptive as to the country of the product’s origin; Obscene.

Logo trademark applications are submitted to the examiners in the same manner as text trade marks.

Is it better to register a logo or just a text trademark?

Filing a text trademark gives you wider and stronger rights than registering a logo, where your rights are in the combined words and graphical elements. With a logo, potentially someone else can register the same words but with a different design. If you have a word mark no one else can use those words, with or without a design, so wherever we can we try to register a text trademark.

If you want to register both the words and separately the logo version, this is treated by all the registries as two applications, so two sets of their fees must be paid.

Can I register a trademark without having launched a business?

Anyone may apply to register a trademark, although if your application is similar to another registered trade mark and you are not the proprietor of a business, it may be opposed on the basis that it was made in bad faith.

Do I need to be using the name?

Trademark applications can be filed either on a "use in commerce" basis, or on an "intent to use" basis. You can file for "use in  commerce' if you have already used the name in your business in ALL classes filed for. 

If you have not yet used your mark but intend to use it in the future, you must file under the "intent to use" basis. This means you have a bona fide intent to use the mark in commerce. An "intent to use" basis requires filing an additional form and fee prior to registration that are not required if you file under "use in commerce".

Use is established by providing the date of first use of the mark anywhere and the date of first use of the mark in commerce, as well as submitting an example ("specimen") showing how you use the mark.

What happens if there are objections from the examiner?

US Trademark exminers can object to a trademark application on absolute grounds - any of the reasons given in our answer to the question ‘What is not allowed as a registered trade mark?’. They can also oppose on relative grounds, that is they think the trademark being applied for is too similar to a registered trademark for the same and similar goods and services.

You as the applicant then have an opportunity to put forward counter-arguments to either objections on absolute grounds and opposition on relative grounds. If these are not accepted by the registry there is a subsequent appeals process.

Once the application is accepted by the examiner it goes forward to be published. This allows other trademark owners to review new applications and if they think any are confusingly similar they have 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process.
 

What happens if my trademark application is opposed?

If after the details of your trademark application is published other trademark owners oppose on the basis of visual, aural or conceptual similarity you have the opportunity to put forward counter-arguments or reach an agreement with them over shared or restricted usage. The trademark examiner then makes a judgement. There is a subsequent appeals process.

Find out if your mark is available to register