The most important marketing decision one can make is choosing a name, a sign, or a commercial shibboleth for his products or services. In order to protect the mark from the competition, it must be registered.
In the first place, one should know that a trademark is a type of intellectual property, alongside with the patents and copyrights. The right over the mark is obtained by the first person who deposits the mark registration application and gets his mark registered, and not by the person who first uses a mark.
The registration can be: national, international, which are of community origin (all member states of European Union).
National Mark Registering
By national mark we understand a mark registered directly in one country, through the national system of registration. In the United States, the organism in charge of marks and patents registration is called “The United States Patent and Trademark Office” (USPTO). The USPTO checks if the applicant fulfills all the conditions for registration.
The application must include the following data so the USPTO accepts it: the applicant’s name and signature, address and other information for correspondence, the image or drawing of the mark, the mentioning of the products or services it is used for, certain fees. The applicant doesn’t have to be a US citizen.
The product or service connected to the mark must be launched in commerce. If the mark hasn’t been used before filing the application, the applicant must declare under oath that he is going to use it in commerce.
The next step is that an attorney will examine if the applicant has complied with all requirements. Any refusal of his will be motivated in front of the Office and can be appealed. The attorney will check if there is another similar mark linked to similar products, in which case the registration will be rejected for likelihood of confusion. The best thing to do is for the applicant to search himself if there is any conflicting mark before filing, to avoid unpleasant surprises and save time, because the examination lasts several months. If anything is missing or it is wrong, the application will be sent back to the applicant for completion or rectification, which takes even more time. So, it is better for the applicant to research and offer additional information when filing, just in case.
If there is nothing wrong with the application, the attorney will accept it and approve registration; this will be published in the USPTO’s official newspaper. Within 30 days from this moment, any person with a damaged interest or right can file an opposition to the decision, which will be judged by USPTO’s tribunal.
After overcoming successfully any opposition, the applicant is ready to get his registration certificate. Trademark registrations are available for a ten-year term, with possibility of renewal. Another application is needed for renewal, filed before the term expiration. The main condition is for the mark to have been used in commerce for at least five years in a row, starting from the registration date.
Trademark Works
Level 19, Two IFC
8 Finance Street
Central, Hong Kong
(852) 2251 8140