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Steps Of A Trademark Application & Registration

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Preliminary Search and Opinion

A search usually conducted by a Trademark professional before preparing and filing a Trademark application and typically which is used as a guide as to what may and may not be permitted in order to assess the suitability of the mark itself and/or the goods or services which may properly associated with the Trademark. A preliminary search is usually a private matter between the Trademark professional and the Trademark applicant and/or registrant and which is typically not filed with a Trademark Office unless strategically advantageous to do so during prosecution. Production of such a private preliminary search may or may not be demanded by a Court of competent jurisdiction depending on local law. The search may be covered by solicitor and client privilege depending upon the country involved.

Preparation and Filing of Application

The date of effective filing of a national or regional Trademark application. All Trademark applications will have a filing date regardless of the content of the application and regardless of whether or not the Trademark application ultimately goes abandoned or is registered. Many countries allow for Trademark applications to be filed on the basis of intended future use in which case, the Applicant’s right to the Trademark applied for will typically not be later than the filing date, although a party with an earlier entitlement date is usually awarded registration of the Trademark. Accordingly, early filing of a Trademark application for a Trademark where use that has not yet commenced is important in order to provide a starting point for an Applicant’s rights to an intended or proposed Trademark where otherwise rights do not begin to accrue until either an application is filed or actual use of the Trademark in the country or region commences (also see Priority date). In other words, once a Trademark application is filed, no one will be able to jump ahead of the Applicant except for those with a provable entitlement date prior to the filing date of an Applicant.

Pre-Registration Watching

From the time that a trademark is selected and a trademark search performed and a decision is made to adopt a trademark for use, whether a trademark application will be filed or not, preferably the adopted mark should be enrolled in a formal watching program, although not a statutory requirement, if budget permits.  While a trademark application is pending registration a competing trademark application could be filed which could limit or prejudice the rights of the first filed application.  Knowledge of the competing application during prosecution of the first application affords the possibility of amending the first application before registration.  Expedited prosecution may also be requested for the first application based on alleged infringement as good grounds for expedited treatment are usually required.  The competing application can also be opposed, but only within two months of its publication (in Canada).  Further, if a trademark application is not filed at all there will not even be a possibility that the application will block competing identical or almost identical applications.  In any event primary responsibility to police the legitimate scope of a trademark applicaion or  registration is the applicant's.  While an applicant may choose to abandon a trademark application, the greater risk is usually the prejudice of the application if the applicant prosecutes the application to registration.  More information  is available below with respect to post registration watching.

Formalization / Formalities

Substantially all Trademark applications go through a procedure called formalities or formalization as soon as a trademark applic ation is filed, whereby the Trademark office of filing determines whether the Applicant has met the minimum requirements to obtain a filing date and a filing number. Checking the Filing Receipt or Filing Notice typically issued by the Trademarks office is important in that the filing date may serve as the basis for a priority claim in other countries, which claim for priority may be invalid if the filing date is found to be incorrect based on some technicality. However, the issue of a Filing Notice or a Filing Receipt in no way implies that the Trademark application complies with all other national or regional laws, nor that a registration will ultimately issue. All other requirements, other than formalities are typically dealt with during the examination stage of prosecution and not during the formalities stage of prosecution.

The document that a national or regional Trademark office issues after reviewing an application for formalities confirming that the applicant has met the minimum requirements for obtaining a filing date and a filing number. The filing number, amongst other things, should be used in all correspondence sent to the Trademarks office. The filing receipt, like all other documents from the Trademarks office, is a form of Office Action, the contents of which should be checked for accuracy. In particular, the Filing Receipt should be checked for the proper spelling of the name of the Applicant, the Applicant’s address, the name of the Trademark attorney or agent, their address and all other recorded information. In particular, the filing date stated in the Filing Receipt or Filing Notice should be checked for accuracy. Depending on how the Trademark application was filed with the Trademarks office, the mode of delivery may result in a deemed filing date which may not be the same as that assigned by the Trademarks office. If an incorrect filing date is recorded and allowed to stand, this could jeopardize the validity of the application or registration, and or applications or registrations filed in foreign countries claiming priority on that application. It is a common requirement in most Trademark offices that all information on the Trademarks register must be correct and kept current. The filing number is assigned by the Trademarks office and typically there is no way to verify a filing number, except against the Trademark office database, unless some obvious error has occurred.

Examination / Official Search

That portion of the prosecution (processing) of a Trademark application, wherein a Trademark application is examined for compliance for non-formal requirements of the relevant Trademark legislation (the formalities of a Trademark application being dealt with at the Filing Receipt stage). During examination a search of the records of the relevant Trademarks office, including domestic Trademark applications based on foreign filings upon which priority has been claimed, are considered. In most jurisdictions, Trademark applications with an earlier entitlement date for confusingly similar Trademarks (for the same or related goods or services and sold in the same or related channels of Trade), are usually cited against the Trademark in the application being examined based on confusion, which is a fundamental Trademark concept in most jurisdictions. Objections based on confusion and other national Trademark requirements in the country of application, if any, are then relayed to the applicant in what is commonly referred to as an Office Action. The applicant is typically given an opportunity to respond to the Office Action before the application is either rejected or must go to appeal.

Approval

Approval, whether under this name or another, means that the examination requirements of the trademarks office have  been met, but this does  not mean that the applicaion has been allowed or that the application is registered (see Allowance and Registration below).  Approval indicates that the application has been approved for publication/advertisment for potential opposition, but not that the application has been published. 

Publication / Advertisement

In most countries, Trademark applications which have been approved by the national or regional Trademark Office then proceeds to publication in a government publication gazette or journal. Third parties who typically watch various Trademark registers and government publications in which through their Trademark professionals use this information to advise their clients as to potentially competing marks and to advise with respect to the potential filing of a Statement of Opposition. it is not uncommon that Trademark applications approved by a national or regional Trademarks Office will still dilute the rights of other Trademark owners and/or otherwise be contrary to the interests of other Trademark owners. Publication or advertisement of otherwise government approved Trademark applications is performed almost universally for a reason and Trademark owners should be appropriately watching these publications as a part of protecting their Trademark rights. However, certain Trademark applications are not published or advertised as certain other forms Trademarks or official marks although published or advertised may not be opposed.

Opposition / Proposed Opposition

The term used to describe the phase of prosecution wherein a third party challenge has been filed with the national or regional Trademark Office objecting to the issue of a Trademark registration to the Trademark applicant for the requested Trademark in respect of some or all of the goods andJ or services set out in the Trademark application. A Trademark in an opposition proceeding which has been successfully defended will be returned to routine prosecution and a Notice of Allowance or Registration will issue in due course. An unsuccessful opponent will typically be given the opportunity to appeal before the Trademark registers. In the event that the opponent’s opposition is successful, and Trademark registration is refused for some or all of the goods and! or services in the application The Trademark Applicant also typically has the right to Appeal within a set period of time. Opposition proceedings are in effect a form of litigation, highly technical in nature, and can be expensive depending on how long the opposition is pursued by both parties. Accordingly, the strongest deterrent to an opposition is a carefully prepared Trademark application which is properly prosecuted and resulting only in rights to which the registrant is legitimately entitled.

Other than a request for an extension of time within to potentially propose, the document which starts and opposition proceeding. A Statement of Opposition typically must include the precise ground for opposition. Unless a response document is filed in response to a Statement of Opposition, such response document sometimes being referred to as a counterstatement, result in the Trademark application going abandoned.

Allowance

Once a Trademark application has been examined by the relevant Trademarks Office, and the examining body has found no objection to the registration of the mark and after the Trademark application provisionally approved by the Trademarks Office has been published in a government publication (to give third parties an opportunity to oppose the Trademark application), without a Statement of Opposition or equivalent being filed against the Trademark application, the application proceeds to what is known as Allowance and a document typically referred to as a Notice of Allowance is issued indicating that the examination of the application has been completed and that the time period for opposition has expired without an opposition being filed. In some cases and some countries, a Notice of Allowance may not issue and an application may proceed directly to registration once through examination and publication. If, however, some further proof of use is required before the Trademark can be registered, then a Notice of Allowance is typically issued. A Notice of Allowance is intended to indicate to the Applicant that no objections to registerability of the Trademark have been found by the Trademarks Office but that one or more conditions must be met before registration may occur. These conditions typically include at least a proper request for registration and may include a registration fee (separate and apart from the original application fee) and may include a Statement of Use or Declaration of Use alleging that the Trademark has properly been put into use in the country or region of application and may include evidence of proper Trademark use in the form of “specimens” showing the mark as actually put into use with the goods and/or services in the Application. Accordingly, an Applicant should clearly understand that an Allowance or Notice of Allowance is not the same as a registration or Certificate of Registration and unless registration of an allowed mark is requested, the allowed application will go abandoned.

Extensions of Time (Optional)

Extensions of Time are typically of two (2) varieties: pre-allowance extensions and post allowance extensions. Pre-allowance extensions are usually given in response to an Office Action from an Examiner citing objections to registration based on conditions which may or may not come to fruition. For example, an approval may be needed before the Trademark application can proceed, in which case the Trademarks Office may grant an Extension of Time to seek such approval if it is reasonable to do so in the circumstances. Alternatively, if a particular mark is being cited as confusingly similar, it may be that the earlier mark is in the process of being cancelled or expunged, in which case it may be reasonable to wait and see whether the barrier to registration is removed before the applicant is forced to respond in full to an Office Action. Post allowance extensions are often permitted upon payment of an official fee, to extend the time within which registration must be requested (and paid for) after the issue of a Notice of Allowance. A fixed period of time is typically given in or in respect of a Notice of Allowance within which to request registration and provide all other requirements of registration, often including an assertion of Trademark use in respect of selected goods and services in the country of application, and sometimes together with specimens evidencing Trademark use in respect of some or all of the designated goods or services to be listed in a Trademark registration. Often a Trademark applicant is unable to show Trademark use in the country of application for any or all of the goods or services designated in the Trademark application by the deadline typically set out in the Notice of Allowance. In this case, the applicant is often permitted to request a series of Extensions of Time of limited duration upon payment of a proper request and payment of an official fee to be received by the relevant Trademarks office in a timely manner, often in a particular mode of delivery. If a Trademark applicant exhausts all extensions then typically a Trademark professional will recommend registering the Trademark application for whatever goods or services the applicant has used the Trademark prior to the last extension expiring and filing a new Trademark application for the goods and services which were not able to be included in the registration due to non use or other reasons. Should such a new application be required, the applicant will lose its original filing date and priority date. As there is typically no earlier use date that can be brought forward in such circumstances, the date of the filing of the follow up application will typically be the applicant’s entitlement date for the goods and services set out in the follow up application.

Oualifying Use of Trademark prior to Registration

In many countries, including Canada and the USA, use of a trademark, or other statutory ground, is usually required before a trademark application can proceed to registration.  While trademark applications can be filed in many countries based  on proposed use or intent to use the mark in commerce, this is not universal.  However,  where a proposed use application is filed in a country requiring use in order to register the mark, use must be alleged or proven before registration can be requested, sometimes by providing samples (called specimens) to support an allegation of use, such as in the USA.  In Canada we no longer have to file specimens with an allegation claiming use or with a declaration of use following the filing of a trademark application, but specimens should be reviewed, organized and kept to prove such use if the trademark is ever challenged, in court or otherwise.  Failure to be able to prove trademark use may result in a registered trademark being held invalid in a court of competent jurisdiction, and the expungement or cancellation of the registration.  Unfortunately, this task becomes significantly more complicated as not all use of a trademark is qualifying trademark use for the purposed of obtaining trademark registration.  Significant statute and case law strictly defines what is and is not qualifying trademark use, which rules vary widely from country to country.  Failure to correctly identify proper trademark use,  or not, can result not only in loss of protection for an individual ware or service, but can result in the invalidity of the entire application or registration.  Accordingly,  many trademark applicants must request one or more entensions of time before they can legally request registration.  However, please note  that many countries permit registration  without proving use before registration, although use must eventually take place or the registration may be cancelled. 

 Registration

A Trademark application which is prosecuted successfully through examination and through publication or advertisement without an opposition being logged typically results in either a Notice of Allowance or may proceed directly to registration. Should there be any preconditions to registrations typically a Notice of Allowance will issue in which case the preconditions to registrations once met will allow the applicant to request registration. A successful prosecution typically ends with a document entitled Certificate of Registration or a similar title which ends the prosecution period. A Certificate of Registration should also be checked in order to ensure that it properly records all rights which have been granted to the Trademark applicant and includes no rights to which the registrant is not entitled. In some jurisdictions the inclusion of even one right in a registration, to which the registrant is not entitled, may result in the entirety of the Trademark registration being held null in void by a court of law. Due to this sometimes harsh standard Trademark professionals will review the rights available to a Trademark application prior to the filing of the application through prosecution an in particular before registration. However, even is an error is discovered after registration it is often possible to correct the registration typically before a Trademark registrant is caught “red handed” so to speak.

Post-Registration Watching

A formal or informal program, typically implemented by a Trademark professional before or after Trademark registration which alerts a Trademark owner of competing marks and applications confusingly similar with the registrant’s existing Trademarks for similar goods and services conflicting with future intended or proposed use of the Trademark for expansion of the product or service line or lines, which may prevent or reduce future expansion of the mark, which may dilute the breadth of the registrant’s current Trademark registrations and/or which may ultimately result in the registrant’s goods and the applicant’s goods, under the same or confusingly similar Trademarks, from no longer being distinguishable from one another and which may result in the loss of Trademark rights for both the registrant and the applicant. Watching programs may be as informal as a Trademark professional or a Trademark clerk or assistant periodically reviewing the lengthy government list of published or advertised marks for opposition purposes or the lengthy lists for Trademarks identical to or confusingly similar with Trademarks that the reviewer recalls. This 19 and 20 century approach to Trademark watching although still prevalent in many countries and firms is wholly inadequate given the global explosion in Trademark interest. The frequency with which Trademark professionals and assistance change firms or retire the length of time between Trademark renewals (often from 10 to 15 years or more between renewals) and fading memories given the computerized tools available today for Trademark watching. Trademark watching programs may be implemented in a number of ways. Watching programs may be programmed to watch for a defined set of search parameters. A watching program may also include several different searches, all being watched simultaneously, and all with different parameters. Records meeting the watched criteria are periodically forwarded to the Trademark professional, typically by e mail, either daily or weekly given that the periods within which an opposition must be launched may be as little as one month from publication or advertisement to as much as nine months or more from publication or advertisement, depending on the country or region involved. Watching programs are typically invoiced on a yearly basis on a per country per Trademark basis although various Trademarks may be combined. A proper watching program is one of the few expenses a Trademark registrant should expect on an annual basis between the time of Trademark registration and the time of Trademark renewal. Failure to adequately do so may result in the loss of Trademark rights, sometime irrevocably.

Monitoring

Unfortunately, not  only must the activitees of third parties be watched, but a trademark applicant or registrant must also continuously and regularly monitor its own trademark use.  An applicant that does not use its trademark properly, including unlicenced uses by related individuals, partnerships, and corporations, may invalidate any trademark protection that he, she or it may have obtained.  Such improper use is potentially even more damaging than improper use by third parties.  This is a whole topic unto itself.

Enforcement

Once an infringing use of a confusingly similar trademark (which does not need to be an identical mark nor for identical wares and services) is discovered steps must be taken to enforce a registrant's trademark registration, or risk the trademark registration being expunged or cancelled.  It does not matter whether or not the registrant is concerned about the infringing use.  If the use is infringing in law this may result in the registered trademark being held not to be distinctive throughout all of the country and therefore invalid.  Unfortunately, even an infringing use of which the registrant is  unaware can result in a registered (or unregistered) trademark being held to lack the necessary distinctiveness to underpin the continuation  of a trademark application or registration.  Hence the need for adequate monotoring and watching.

Renewal

The conditions of renewal may or may not be set out in the Certificate of Registration and if so, such conditions, including the time period within which a Trademark registration must be renewed, and the renewal fee may change without notice. The time period between renewals is typically the same within each individual country, but they need not be. Certain countries also have additional quasi renewal requirements which are in effect a form or renewal but not referred to as such. These may include requirements to file documents entitled Affidavits of Continued Use and the like. Renewals per se may simply renew the registration in the form in which it originally registered, or as previously amended, or the renewal procedure may require proof of continued use of the Trademark in respect of each and every good and service in the registration, failing which the goods and services no longer in use in association with the Trademark must be deleted from the registration, failing which the entirety of the renewal may be attackable in a Court of competent jurisdiction. A Trademark which is not renewed may be referred to as not renewed or may be referred to as cancelled or expunged, although other forms of cancellation and expungement may exist. A Trademark registration may be cancelled or expunged earlier and other than for non-renewal including abandonment of the Trademark or lack of use of the Trademark for a given period of time, often but not always three years. Accordingly, it is useful to periodically review the use, or lack thereof, of all Trademarks in a portfolio to determine Trademarks at risk of cancellation or expungement at the mere request of a third party and sometimes the national or regional Trademarks Office itself. Trademark registrations may also be cancelled or expunged where the pre-condition of Trademark use, such as distinctiveness, no longer exist. Such challenges, may come in response to infringement proceedings, or otherwise.