Depending on the country in which you wish to register your trademark, the application process takes between 4-18 months and consists of several stages.
On average, 70-80% of all trademark applications are eventually registered, highlighting the crucial importance of this step taking time before the actual submission of the application. Should the trademark application be refused, the administrative fees paid directly to the intellectual property office are not refunded. If you were submitting your trademark application through a trademark attorney or a dedicated IP practice, please be aware that the money-back policies between individual service providers vary considerably.
There are several questions that you should be able to answer before filing the trademark application in order to successfully complete the submission and maximise the chances of a successful registration.
What are you trying to trademark?
As part of the trademark application process, you will need to specify the form of the trademark to be registered. This could be in a textual format, graphical format or a combined format (a logo featuring the name of the company). You can learn more about the benefits of individual forms of trademarks in our lecture What should I trademark: Name versus logo.
Does your trademark meet the criterion of distinctiveness?
The bottom line is that a trademark can only be registered if it displays sufficient distinctiveness. This means that it needs to be unique enough in relation to the goods and services you offer and cannot resemble competitors’ trademarks that have already been registered. You can learn more about the criteria for trademark registration in our lectures on distinctiveness and similarity.
Which goods and services do you / will you use the trademark for?
Specification of the goods and services is a crucial aspect of the trademark registration process, effectively defining the scope of protection enabled by the trademark. You can learn more about the selection of goods & services in our lecture Understanding goods & services selection.
Who will be the intended owner of the trademark?
The owner of a trademark can be either an individual person or a legal entity (e.g. corporation). The later option provides a number of benefits, particularly relating to the ease of exit should you wish to sell the company (alongside the trademark) in the future. Furthermore, although the adherence to these rules is very limited in countries other than the US, the non-use of a trademark in commerce may provide grounds for the revocation of the trademark in the future. This means that if it is a legal entity that uses the trademark in commerce, this entity should also be depicted on the trademark application. Transfer of trademark ownership is up to your discretion for a minor administrative fee.
Can you submit a trademark application on your own?
The formal requirements in several countries allow for applications filed by residents or local representatives (trademark attorneys). For example, trademark applications in the US can only be filed by the US citizens or authorised trademark attorneys registered with the USPTO. Should you wish to register a trademark in a foreign country, a local trademark representative may be a necessity.
Stage 1: Formal examination
The first stage of the trademark application process takes the form of a formal examination in which the appointed representative of the intellectual property office evaluates the formal aspects of the application. Distinctiveness of the trademark in question is assessed in this stage as is the compliance with the relevant regulatory guidelines, e.g. preventing the use of offensive words or ensuring that the application is filed by a citizen or an authorised representative. The length as well as the scope of this stage varies considerably between individual countries and may take up to several months.
Stage 2: Published for oppositions
Should all formal issues be resolved, or none raised in the first place, the trademark in question is published for oppositions. The length of this window varies substantially across individual countries but typically is around 1-3 months. During this window, the owners of existing trademarks as well as other potential competitors have the right to raise oppositions against the trademark in question. Generally speaking, oppositions tend to be based on the perceived similarity and the associated level of consumer confusion. The applicant is notified about any and all oppositions raised and is provided with an opportunity to respond to these issues.
Stage 3: Issuing trademark certificate
Once raised oppositions challenging the trademark application are resolved, or if there were none, the corresponding intellectual property office completes the registration process and issues a trademark certificate.
The validity of the newly registered trademark dates back to the date of filing and tends to be 10 years.