The main points to consider about trademark registration before you start:
- A trademark gives a monopoly right to sell products or services under a certain designation (e.g. a word, logo, symbol, slogan, label, etc.)
- A trademark is registered with regards to a specific list of goods and services that are or will be marked with this designation.
- The effective term of a trademark is unlimited and is subject to renewal every 10 years.
- For a trademark to be registered, it must be distinctive (neither directly refer to the manufactured goods or their characteristics nor consist only of consonant letters or numbers, common symbols or terms), and it must not be false or immoral.
- A trademark is registered for each country separately, and it must be unique among other trademarks and signs used in this country.
- In many countries, the right to a trademark can be terminated prematurely if it is not used by the right owner for 3 years.
- As a general rule, the owner of a trademark can only be a business entity, i.e. a company or an individual entrepreneur.
- In most countries, foreign applicants can apply for trademark registration only through patent attorneys certified in that country.
Timely filing of a trademark application helps prevent third parties from registering it, which is a critical issue for developing companies.
- The most important step in filing an application is to select the ICGS classes as well as the goods and services for which registration is planned. There are 45 classes, each listing a large number of goods and services. The number of ICGS classes and the number of goods directly determine the cost of registration (fees and services of attorneys) as well as the chances of registration, so it is worth choosing only those goods and services that will actually be produced under this trademark.
- The list of goods and services is slightly different for each country, but it is always subject to the International Classification, which can be found in the Goods & Services Manager .
- Before filing a trademark application, it is recommended to conduct a protectability search to make sure there are no obstacles. However, the cost of the protectability search may often exceed the cost of the application itself, which reduces its usefulness. If you want to save money you can use the Global Brand Database to conduct the search yourself.
- It is important to apply for the format of the trademark (a word, picture or a combination of them) that will be used in real activities, otherwise the trademark can be challenged.
- In some countries, such as the United States, a trademark application can only be filed if it is already in use in that country or there is an intention to use it. In the latter case, it is necessary to provide proof of use after about 6 months or to extend the period by paying additional fees.
- The cost of filing an application for registration of a trademark varies in different countries and is usually in the range from $250 to $1500 per ICGS class. In most cases, filing an application is a formal procedure, so there is no particular need to choose expensive attorneys.
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The Madrid system for filing trademark registrations deserves a special mention:
- The Madrid International Trademark Registration System allows you to apply for trademark registration in 128 countries worldwide.
- It is not always cheaper than direct registration in each individual country; in most cases, it is chosen for convenience, as there is no need to work with a large number of attorneys in different countries to submit the application.
- The Madrid application requires a basic application in the country of residence. The Madrid application follows the basic application for 5 years, which means that if the basic application is denied or challenged, the Madrid application will also be canceled.
- You can calculate the cost of the Madrid Fee Application by using the Madrid Fee Calculator. Then, it makes sense to compare the calculation with the direct cost of filing in different countries.
- The Madrid application is also advantageous because, in the case of a positive decision on registration, there is no need to pay additional fees for the registration and issuance of a trademark, as in the case of a direct registration.
- However, it is often necessary to communicate with local patent attorneys in the event of requests for examinations, in which case the cost of services may be higher than if the application was originally filed through a local attorney.
Examination, granting, and renewals:
- In some countries or regions (e.g., in Europe), the examination is formal, i.e., the patent office does not check for competing trademarks and publishes the registration decision after the formal examination. The period of time after the formal examination is usually 3-6 months, during which any interested party can file an opposition against the registration of the trademark in question. This approach reduces the period of examination and the cost of trademark registration.
- In the US, for example, marks registered under the Madrid system may be subject to an audit, in which case proof of use will be required for the two goods or services specified by the auditor. If there is no evidence, such items will have to be removed from the application and you’ll need to pay a $250 fine for each item, and provide evidence for all the others, etc. You could end up paying several thousand or even tens of thousands of dollars in fines.
- In the case of expertise requests concerning competing trademarks, it is very important to prepare a response in accordance with the local interpretation of trademark similarity, so it is important to choose an experienced and responsible trademark attorney for this work.
- The issue of a trademark often entails a simple payment of fees and sometimes you can get an electronic certificate in just a couple of minutes. So, at this stage it makes sense to analyze the cost of services of a current attorney, it usually should not exceed a few hundred dollars.
- After registration, it is necessary to pay a trademark renewal fee after 10 years from the date of filing, so that the trademark is valid for another 10 years. It is easier and cheaper to outsource this function to specialized services.
Registering a trademark is a much simpler procedure than, for example, registering a patent for an invention, but has its own specifics in each country and at each stage. The most important is the timeliness and accuracy of actions at minimum cost, since the business strategy (target markets, manufactured goods, design or name itself) can change rapidly, so the procedure will most likely be undergone more than once.
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