Once a clearance search has been performed, and one is comfortable about the strength of a desired trademark, or has decided to file a mark without a search (which is not advised), the process for filing a trademark application can be started.
Although any individual can file a trademark application alone, keep in mind that a trademark attorney can be very helpful in the process of executing an IP strategy, from assisting in categorizing goods and services, choosing relevant jurisdictions for filing, and deciding filing strategies, to preparing office-action responses to refusals to register that a trademark examining attorney may issue during the prosecution, and policing and enforcing any trademark registration that may issue. Intellectual property firms specialize in such activities.
Whether one decides to file independently, or engage the services of an attorney, a clear idea about the goods and/or services in connection with the mark that one wishes to register is necessary. A trademark attorney can help determine the best way to describe and categorize the goods and services under appropriate classes. The filing will be either based on actual existing use of the mark, or a bona fide intention to use the mark in the future.
A trademark examining attorney from the relevant trademark office will review the application within a few months after the application has been filed. If that review raises an objection, the owner must either correct the deficiency, or argue against the viewpoint of the examiner. At the end of the prosecution process, either the application is denied, or approved for registration.
After the application is approved by the examiner, it will be published, triggering the start of an opposition time-period for those who claim the mark should not be issued. Typically, the opposing party is the owner of another registered trademark alleging that the new mark is closely similar to the opposer’s trademark, and that the issuance of the new mark is likely to cause confusion to consumers.
If no opposition is raised, or if there is an opposition that cannot succeed against the applicant, a trademark registration will be issued. An issued mark remains in force as long as it continues to be used.
FlashPoint IP, a leader among intellectual property firms, provides all types of professional trademark searches for registered and unregistered marks worldwide, as well as national and international trademark registration. We assist in the candidate selection process of brand names to maximize IP value and protection. Contact us to discuss your options regarding IP strategy and positioning, and to find out more about FPIP trademark filings. On Your Mark, Get Clearance, Go!