How to File an International Trademark Application, an Easy Guide

This is a process for filing only. There is no such thing as an exclusive international trademark registration.

Any trademark holder with a request filed in, or a registration produced by the U.S. Patent and Trademark Office ("basic application" or "basic registration"), and who is a national of, has a dwelling in, or possesses a commercial establishment in the United States, can present an international submission through the U.S. Patent and Trademark Office.

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The mark and the holder of the international application should be the same as the mark and the holder of the fundamental application or registration. The international application should accommodate a list of goods and services that is equivalent to or slightly different than the list of goods or services in the fundamental claim or registration.

Perchance the international application is appropriately established on a U.S. Application or registration, then the U.S. Patent and Trademark Office will ascertain that the specific information in the international claim is identical to the information in the U.S. Basic application or registration and send on the international claim to the "International Bureau," the World Intellectual Property Organization.

The International Bureau does not by design register the mark if it is approved by the U.S. Patent and Trademark Office. Certification by the U.S. Patent and Trademark Office is simply to guarantee that the international claim is properly based on a U.S. Claim or registration and to make binding the date of receipt of the international application. The International Bureau is required to still assess the international application to ascertain whether it experiences the Madrid Protocol filing necessities. If the necessities are met and the costs paid, the International Bureau will then register the mark, circulate it in the WIPO Gazette of International Marks (WIPO Gazette), send a certificate to the international petitioner, now called "holder of the international registration", and inform the Offices of the Contracting Parties entitled in the international application.

Subsequent to when the International Bureau registers your mark, the International Bureau will inform each Contracting Party entitled in the international registration of the application for a continuation of protection to that country. Each assigned Contracting Party will then consider the demand for an addition of protection the same as it would a national claim under its laws. If the submission meets the specifications for registration of that country, it follows that the Contracting Party will consent to protection of the mark in its country.

At hand are dead set time limits for declining to agree to an extension of protection (a ceiling of 18 months). Perchance a Contracting Party does not inform the International Bureau of any denial of an extension of protection contained by the time limits declared in Article 5(2) of the Madrid Protocol, the holder of the international registration is without human intervention, awarded protection of its mark in that country.

How to File an International Trademark Application, an Easy Guide

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UK Trademark Application: The Procedure

A UK trademark application is filed at the UK Intellectual Property Office by post, fax or most often, electronically. It includes a representation of the trademark applied for, the name and address of the applicant and a list of the goods and/or services in respect of which registration is sought. After the application has been filed, a filing receipt is issued.

application tape

Next, the UK trademark application is examined. The application is examined on the following grounds: -

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"Relative grounds" - this is for conflict with earlier UK trademark applications or registrations, which are identical or confusingly similar, and cover overlapping or similar goods and/or services; "Absolute grounds" - this includes an assessment of whether the trademark applied for is distinctive, descriptive or customary in the relevant trade. A monopoly right will not be granted in such terms, which should be available for all traders to use to describe or refer to their goods or services.

If any examination objections are raised, the applicant or his representative will be notified and a period of time set for response.

In the case of examination objection on absolute grounds, the applicant or his trademark attorney can make written submissions or conduct an oral hearing with a senior examiner. If any of these objections are maintained, the application will be refused.

With regard to relative grounds examination objection, again, the applicant or his trademark attorney has the opportunity for discussion with the examiner. If the examiner maintains any of these objections, he will send notification of the later application to the owner of the earlier UK trademark applications or registrations located, in order that opposition can be filed, if the trademark owner is concerned. The opposition period lasts for two months. Opposition can be filed on various grounds including: -

lack of distinctive character; descriptiveness; bad faith; that the trademark applied for is identical with an earlier trademark and for identical goods or services as the earlier mark; that the trademark applied for is identical with an earlier trademark and for similar goods or services as the earlier mark; that the trademark applied for is similar to an earlier trademark and for identical or similar goods or services as the earlier mark; that the trademark applied for is identical or similar to an earlier trademark which has a reputation; that the trademark applied for contravenes the law of Passing Off, which protects unregistered trademarks; and/or that the trademark applied for contravenes copyright, design right or registered designs.

The opposition rate against a UK trademark application is quite low, presently about 5% of all applications published.

If no opposition is filed, the application will be registered and a registration certificate issued. A UK trademark registration remains in force for ten years and can be renewed for subsequent ten yearly periods.

UK Trademark Application: The Procedure

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Can You Do Your Own Trademark Search?

To the surprise of many people, the first step in a trademark registration is not filling out the application provided by the Patent & Trademark Office. No, the first step is doing a trademark search. The question is whether this is something you can do yourself or need to have some else do for you.

Why Search?

LOWES ONLINE APPLICATION

Why do you need a trademark search? This is a simple question, but comes with a critical answer. You must do a trademark search first because there needs to be a determination as to whether the mark you have in mind will infringe on any other that is already being used in the marketplace or is registered with the Patent & Trademark Office. If there is one, you can save the time and effort of filing while thinking of another mark to use. I can't emphasize this enough. You must do a search up front to make sure you will not be infringing on the marks of others.

DIY

Let's face it. We are a do it yourself kind of country. If we weren't, giant companies like Lowes and Home Depot would not exist. To the surprise of many lawyers, this do it yourself spirit has spread to the legal world where there are a host of services offering to do what previously only lawyers do and, just as importantly, individuals now taking care of their own legal needs.

So, should have a go at doing trademark searches on your own? Yes and no. Pursuing the first steps on your own is definitely something worth your time and effort. The first step is to do what is known as a common law search. This involves searching the web for your mark. If it is a graphic, this can be difficult. If it is a word or text, it can be easy. Just search and see what comes up. Also, type it in as a domain to see if someone has already registered it. If you find anything, there is a very good chance your mark would infringe on the one already being used on the web.

The second DIY step you can take is to visit the Patent & Trademark Office website and do your own search of the agency database. Go to the trademarks tab and then follow the links to the search section. If you have a multiple word phrase in mind, make sure to write "and" between each word. The database should kick out results that are close to your mark and you can evaluate from there. Again, this is primarily only for text based marks you have in mind.

Cleared Search?

So, are you done if you pass both of the above tests? No. Now you need to hire a trademark search service to do a more thorough search for you. Remember, there are trademarks filed at the state level and some used in commerce that do not appear on the web. If you miss out on these, you are going to face an infringement claim down the road that will be a disaster.

Why not just hire the search service up front? You can, but it usually will run you a few hundred bucks. Eliminating obvious conflict sources like the web and Patent & Trademark Office can save you that fee.

Can You Do Your Own Trademark Search?

LOWES ONLINE APPLICATION