FAQs Categories: Questions about trademark filing

How long is a trademark opposition process?

In different countries trademark opposition process is different.

In the US, trademark opposition period is only 30 days, so you have to be pretty fast if you plan to oppose.

A trademark opposition in Brazil may be filed by an interested party within 60 days from the date of its publication.

In Canada, Australia and New Zealand one has to file a trademark opposition within a 2-month period.

A trademark opposition in South Korea may be filed by an interested party within 2 months from the date of its publication.

In the UK, an opposition period is 2 months but can be requested to 3 months upon a request made by a party that intends to oppose.

A trademark opposition in Japan may be filed by an interested party within two months from the date of its publication. Trademarks are published twice, first time right after filing and second time after registration.

In Germany, publication happens after registration. Opposition period is 3 months.

In the European Union and China, a notice of opposition must be filed within 3 months following the publication.

In India, anyone may oppose registration of an Indian trademark within 4 months after publication.

What is a Headstart trademark application in Australia?

Australia is quite unique as it offers two types of trademark application filings:

  1. Standard filing
  • You get an immediate filing date
  • You cannot make changes to your application or list of products/services
  • Your trademark is reviewed after filing
  • Your trademark proceeds through a standard examination process until registration

 

  1. Headstart filing
  • This is pre-application services provided by IP Australia
  • You pay higher filing fees (AUD$400 vs. AUD$250 per class) but you only pay AUD$200 at the beginning
  • Your trademark is assessed by an Examiner before it is filed.
  • You get a report within 5 days of filing. Once you get the report you can decide if you want to proceed further. If you want to convert your application into a Standard application, you have to pay the remainder of the fees.
  • You can make changes to your trademark or description once you get the report.
  • Once your trademark is converted, you get a formal filing date and no more changes are allowed.
  • Your trademark proceeds through a standard examination process until it registers

 

While a Headstart application may be a great choice there are some important drawback of this filing:

Since you don’t get a filing date immediately, what if somebody else filed a similar trademark while you were waiting for the Headstart report?

Trademark Office is not bound by the Headstart report and can issue different objection at a later date.

If your products are unique and not in the picklist, Headstart may not be the best choice since it only allows to pick the products/services from the list of pre-approved goods and services.

How do you know which one to use? We can usually advise when Headstart may be reccommended. If we find similar trademarks and unsure that your trademark will register, we can recommend Headstart trademark application filing first. If you don’t want to invest a ton of money in your marketing campaign and want to maximize your chances for your trademark to be approved, Headstart may be the answer.

Once we receive a Headstart examination report, you can then make a decision whether to proceed with the filing.

 

In what color should you file your logo in the European Union?

If you are filing a logo in the European Union, filing in black and white will not allow you to use your logo in any color, unlike the US and Canada. Marks that are registered in black and white but used in color may be vulnerable to cancellation if the owner of the trademark does not prove genuine use of the trademark “as registered”. It means that the logo trademark has to be filed in the color that it will be used (and not in black and white unless the owner plans to use the logo in black and white).

Full rules with detailed questions and answers can be reviewed here: European Common Practice.

If you are thinking of filing a new trademark application, you may want to file two applications: one in black and white to cover all color combinations if you ever need to bring a proceeding before a National Court that has not implemented European Common Practice and one in a particular color that you use to comply with European Common Practice.  As us about a special discount for a black and white and color logo (if filed at the same time).

I am an Amazon seller and I don’t know what products I will sell next year. How do I file my trademark application?

We understand you. It’s “catch 22” in a way: in the US, you can’t register a trademark until you begin sales but you can’t get in the Brand Registry until you have a registered or pending trademark. On top of this, being an Amazon seller you need to be adaptable as you don’t know what products you will be selling next year. So what should you do?

Let’s break this into pieces:

1. You need a registered trademark to get into Amazon Brand Registry and to get full protection for the products you sell. You may also get in the Brand Registry with a pending trademark but you won’t be able to remove hijackers until your trademark registers.

2. A trademark is always filed for specific products and each category (class) of products comes with the Trademark Office filing fee (aka government fee).

You can’t file a “generic” or “umbrella” trademark without identifying the specific products in the trademark application.

3. It means you need to come up with a mini-business plan and itemize the products you may be selling in the next year. This may require product research and brainstorming.

4. Once you have the list of products or at least a general category, we can do an initial trademark search.

5. In order to file a trademark, we’ll need to know actual products that you sell or will be selling in the foreseeable future. We can finalize them once we begin working on your trademark application. If you provide us with a general category, we can write a product list for you, but we do need your initial input.

Please note that registrations are granted only for specific products or services that are listed in your trademark application and NOT for the whole class. Additionally, please remember that registration of your trademark does not give you a monopoly for other products and services not covered by the registration (unless those other products and services are considered “related”, i.e. similar). Examples of similar products: clothing and bags; jewelry and watches; toys and educational books; cosmetics and creams; tea and coffee.

We invite you to check our articles on this subject:

11 Trademark Tips: how should I list products and services in my trademark application?

What Every Business Should Know about Trademarks Registration?

Note: no use prior to registration is required in Canada, the UK, EU,  Brazil, Japan, China,  and Australia.

UK Trademark registration process

UK Trademark Registration

How to register a trademark in the UK?

Step 1: Search

Prior to filing a trademark search should be done. It can be ordered online on our website.

Please contact us for trade mark registration in UK with your trademark and a list of goods and/or services of interest and we will do a free trademark search for you.

Step 2: Filing your application

In order to file your UK trademark application, we need:

  • Trademark name
  • A picture of your trademark logo (.jpg image is preferable);
  • Applicant’s name and address (this may be an individual, two individual or a legal entity, such as a Limited Liability Partnership (LLP) or a company);
  • A list of the goods and/or services in relation to which your trademark mark is used or intended to be used. Don’t worry about sending an exact list. A description in your own words is enough.

If your application claims priority from a corresponding foreign trademark application, please provide the filing date, application number, and country of first filing.

Your trademark will be submitted electronically after you approve it.

An official filing receipt is issued by the UK IPO (UK Intellectual Property Office) 2-4 days after filing. The filing receipt confirms the filing date and assigns an application number.

Step 3: Examination

Your trademark application uk will be reviewed within 5-15 days

Your application is examined on the following grounds:

  1. Relative grounds – the Examiner conducts a search of earlier trademarks with effect in the UK and informs UK applicants if he/she finds that your trademark is close to a previously filed or registered trademark. Note your trademark will not be refused by the Trademark Office if there is a similar mark; and
  2. Absolute grounds – the Examiner determines whether the trademark is descriptive or non-distinctive. The Examiner will examine your mark to make sure it’s not offensive or immoral.

The Examiner may also ask additional questions, like asking to re-specify the goods/services if they were not clear.

If an examination objection is raised, the Examiner will set a period for the applicant to respond.

Step 4: Publication

Once the examination stage is completed, the application will be published in the online Trade Mark Journal. Within a two-month period, third parties have an opportunity to file an opposition based upon prior registered or unregistered rights.

The most common ground for an opposition is confusion with a prior filed or registered trademark.

Some other grounds are descriptiveness and bad faith.

About 5% of all applications are opposed, so it’s not something you should really worry about.

If a third party is concerned, they will usually request to extend the opposition period by one month and try to resolve the situation amicably.  In many instances, oppositions may be resolved by a simple modification of goods/services (for example, by limiting them). Many cases are resolved without a formal opposition.

Step 5: Registration

Two weeks after publication, the UK IPO will issue an electronic registration certificate. Paper certificates are no longer issued. We will send you the electronic copy by email.

The registration certificate confirms the registration details and registration dates.

Once the UK trademark application has registered you may use the ® symbol to indicate that your trademark is now registered. Please do not use ® symbol before registration.

You may also wish to state “[YOUR TRADE MARK] is a Registered UK Trade Mark of [PROPRIETOR]”. This alerts others to your rights and can act as a deterrent.

Note: in the UK one refers to a “trade mark” (two words) whereas in the US and Canada it is “trademark” one word. For simplicity and consistence, we refer to a “trademark”, rather than a “trade mark”.

Next step: Renewal

A UK trademark registration can last forever, but it has to be renewed every 10 years. A UK trademark registration can be subject to action for revocation for non-use, five years after registration.

 

Check out this cool Infographics – UK Trademark Registration process

What is a specimen of use?

A specimen of use is an example of how your trademark is used on goods and services in the marketplace. Goods means products.

To show use for goods, your trademark should be affixed/attached on the actual product or packaging of the product. A photo, mockup or drawing of the mark is not enough.

A person can submit tags, instruction manuals, containers, labels, or packaging materials. It may be the easiest to take a photo of your product and/or the packaging and ensure that the trademark is clearly visible.

Advertising materials are generally not acceptable as a specimen for goods.

If you offer services, the easiest way to prove use is to provide a screenshot of your website so that the trademark is clearly visible in the website header. You can also provide flyers, directory listings, and brochures. A business card or a photos of your business signage could be an acceptable specimen of use for services if the card displays your trademark along with the services the mark is associated with.

It is important to submit the right specimens of use in order to avoid trademark refusal. If you are not sure which specimens will be acceptable, call Trademark Angel.

When do you need to submit specimens of use?

You need to submit specimens of use immediately when you file a trademark application based on use.

If you file a trademark application based on an intent ­to ­use, specimens of use are not required with the initial filing and can be submitted later.

However, you will need to submit specimens of use before your trademark is registered. Your trademark will not register until a Statement of Use is filed. If you didn’t start using some of the products and services, they will have to be deleted from the application (or the application could be divided).

Do you always have to file a Statement of Use? No, there is one exception from which foreign applicants can usually benefit. This is when a US application is based on a foreign registration. In such a case, the intent­-to ­use filing basis may be deleted, and a US application may proceed to registration on the basis of the foreign registration alone assuming all other conditions for registration are satisfied.

After your trademark registers, you will need to file specimens of use to maintain your registration (between the 5th and the 6th year after registration). You will also need to file specimens of use when you renew your trademark registration.

If you are not sure if specimens of use are required, call Trademark Angel.

 

How do I find an acceptable specimen of use?

In this video, we will discuss some examples of acceptable specimens of use for your trademark application.

First, we’ll discuss acceptable specimens for products.

A photograph of the product showing the mark the actual product.

Examples: metal plate on a bag or wallet; barbecue grill.

Packaging of the product showing the mark.

Example: tissue boxes; packaged fruit or vegetables; packaging for a toy.

Signage used in a product display in a store.

Example: Photograph of the physical product display.

Product labels and tags showing the mark.

Example: inside label of a t‐shirt; hang tag on a blouse or pants.

A Internet page showing the product near the mark and together with purchasing information.

Example: a website page shows a photograph of headphones, the mark for the headphones appears above the photograph, the price appears below or next to the photograph, and a shopping cart button or other way to purchase the headphones appears on the page.

If your product is downloadable software, you can prove use by showing copies of the instruction manual and screen printouts from the actual program that shows the mark in the title bar, or launch screens that show the mark in an introductory message box that appears after you open the program. A web page showing the mark in connection with the information sufficient to download the software will also be acceptable.

A specimen for services generally shows the mark used in the sale or advertising of the services. A customer should be able to associate your trademark with your services on the specimen.

Why a trademark search is never 100% accurate and more about comprehensive trademark searches

Although a trademark search is very useful and necessary in order to determine if a mark is registrable, the risk and challenge are never completely eliminated. Even an especially thorough search may not uncover every potentially conflicting mark, for several reasons.

In the United States or Canada, a newcomer to the search process might expect that it would suffice to check only the records of the USPTO or CIPO. However, one cannot rely solely on a Trademark Office database search, since registration is not necessary to obtaining trademark rights in the United States or Canada.

Many valid trademarks exist at common law without ever appearing on the trademark register.

Thus, in addition to checking Trademark Office database, one should check the Internet, as well as and also different marketplaces including Amazon, eBay, Etsy, Shopify and company databases looking for the use of unregistered marks.

Searching common-law marks is not very easy and is never cheap since there is no single source that lists every unregistered mark in current use in the United States or Canada. There are many potential sources of information that could be searched on, and it is not economical to try to search them all.  Just by way of example, a full search in the US will cost you $1500.

Additionally, one cannot expect that every source will provide accurate, complete, and up-to-date information at the time the search is conducted because every database has its limits.

The Trademarks Office database, whether Canadian or US, is never completely up to date, because a time lag exists between the time an application is filed and the time it appears in the search database (the delay is about 7-days). Therefore, recently submitted applications will not appear in a trademark search, even though the lag may be only a few days long.

Also, foreign applicants may obtain an effective U.S. (or Canadian) filing date that is as much as six months earlier than the actual filing date if they claim priority from the filing date in their native country.

That means there is always a risk that a foreign entity may file in the US or Canada, and claim priority from the initial filing date in a foreign country. A search will not reveal a trademark that has not yet been filed. This means you could file an application for the mark thinking that it’s registrable, only to have a foreign applicant “jump the line” with a belated application based on an earlier foreign filing date.

Trademarks Office databases are also not always accurate. It’s possible for a system to time out so your search will not uncover all the results. It’s also possible that a trademark is not indexed properly so a confusingly similar trademark may not even show up in a trademark search.

Even if the databases were completely up to date, searching would still be an imperfect science. Trademarks do not always follow established rules of spelling, grammar, construction, punctuation, or meaning. Misspellings, wordplay, unusual constructions, creative punctuation, and other inventive variations are commonplace, and they create unexpected pitfalls for searchers.

For all these reasons, it is possible to perform diligently and evaluate a search, and conclude that a mark is available, when in fact a direct conflict may exist, hidden from view.

Here are a few examples:

You may do a search for DONUT for advertising services, and the search is clear. However, you will not know that there is a foreign equivalent trademark in French – BEIGNET and although not identical, this mark may present a serious challenge. In Canada, one must search for French equivalents, and in the US, under the doctrine of foreign equivalents, words in other languages are translated into English and are tested for likelihood of confusion.

It’s not possible to search for all synonyms. For example, if you’re searching for WALKING DOGS you may not find STROLLING PETS and this mark, although not the same, may be found confusingly similar. A trademark search for LADY VET may not show trademark search results for MADAM PET DOCTOR.

Finding different spelling is also challenging. If you search for EXTRAVAGANZA, you may not find EXTRABAGANSA, and if you search for VAGABOND, you may miss BAGPOND. A trademark search for QUICK (Q-U-I-C-K) may not uncover Quick: KWIK, KWIX, QUIK and trademark search for EASY may not uncover E-Z, EZEE EEZY, EASI.

Trademark Angel uses Corsearch searching system which allows a search for phonetic equivalents and vowel substitution. Once a trademark search is done, all the data can be organized according to relevance.

In addition to this, it’s critically important to search for the right classes. Omitting a class may result in missing an important trademark. It is advisable to search for broader classification than the real filing to catch all possible conflicts.

Even so, no search is 100% accurate. That’s why we always advise our clients to check the Internet, marketplaces and social media use in addition to asking us to do a trademark search. For social media search, we recommend you use https://namechk.com/, which will allow you to check all domain names, social media usernames – all at once. Coupled with a proper Trademark Office database search, you will have a pretty good idea if your trademark is registrable.

Since a search cannot completely eliminate the risk, the realistic goal is to eliminate as much risk as possible. This is why it’s advisable in addition to doing your own, due diligence to go to professionals who’re experts such as Trademark Angel, a trademark registration firm with over 18 years of experience in the area of trademarks.