How to register a trademark (trade mark) in the US, UK and EU (Part 2)

Part 2: Filing and the Application Process

In this article, we pick up where Part 1 left off: You’ve done your prefiling checks, and you’re ready to start the trademark (or “trade mark” depending on your country) application process.

The application form. The US, UK and EU each have their own unique form to file. However, they seek a lot of the same information, such as the applicant (your) name, address, and contact information. Of course, they also ask what the trademark is, whether the mark is a standard character mark, or if it is stylized with a picture and font.

Describing the goods and/or services you use your mark on and/or for is also very important. How you describe these goods and services will determine what class you are in (classes were described in Part 1). Some jurisdictions provide you with an online program to help you build your descriptions. If you ever look at some well-known marks, you will see that many of them have very long and convoluted descriptions. These are usually written by attorneys or trade mark specialists trying to capture as much territory as possible to prevent others from getting too close to their client’s marks. That does not mean that is the best policy, though, because if you put it in your description, you’re expected to actually offer those goods and/or services regularly. Failure to do so could cause you to lose it. So sometimes, a clean, accurate and straightforward description is the best.

This is also where the biggest difference exists between the US and the UK/EU – In the US, you must prove you are actually using the mark by stating when you started to use it and uploading a specimen of your mark in use – such as a photo of it on your goods. If you are currently using the mark, you submit this specimen and you tick a special box that says it is currently in use. On the other hand, if you only intend to use it, you do not have to file the specimen immediately, and you tick the box that says you intend to use it. This is called, unsurprisingly, “intent to use”.

If you tick “intent to use” and your application passes the initial examination and publication, then you will receive a “Notice of Allowance” from the USPTO. Once you receive this, you only have six months to show that you are now actually using it in every class you applied for. If you do not do this, your application will fail. You will also have to pay a little more to submit the late specimen. In contrast, if you were already using it when you applied and submitted the specimen from the outset, your mark would be registered successfully once you passed publication. A final note on this is that if you cannot file the specimen within six months of the Notice of Allowance, you can ask for up to 5 extensions of time to do so. Each extension is six months and comes with a small fee each time you do so.

The initial examination and Office Action. Once you have filed your application, an Examiner will review it to make sure it complies with the law. Relatively often, though, the Examiner will find a problem with the application. Sometimes it is not a big deal and can be fixed readily, but other times it can be serious. Either way, the Examiner will first issue a Non-Final or Provisional Refusal, also known as an Office Action. The Office Action will be sent to you. It will state what the problem is and give you a deadline to respond. If the problem is small, sometimes just a call to the Examiner can fix it. However, if the problem is serious, you will want to either file a written response making your case or perhaps abandon the application if you do not think there is any chance to win. If it is more than a simple problem and you want to fight, talking to a seasoned attorney is probably a good call.

Once you have filed your response, the Examiner will either agree with you, and your application will proceed, or s/he will disagree with you. If s/he disagrees with you, you may get another Non-Final/Provisional Refusal (which you can file another response to), or you could receive a Final Refusal. If you receive a Final Refusal, then you need to think about whether you want to fight it, the process for which exceeds the scope of this article.

The publication period. If your application gets past the initial examination and any Office Actions, the next step is publication in the USPTO, UKIPO or EUIPO publication journals. Publication gives the world anywhere from 1 to 3 months (depending on jurisdiction) to challenge your application with an Opposition. The clock starts ticking on the day our application is published.

An interesting side note – In the US, if your mark is similar to an existing registered mark or pending application, then the Examiner will ask you to defend your mark with an Office Action. In contrast, the UK individually writes the potentially aggrieved parties and invites them to oppose your application.

If you receive an Opposition to your application, this can mean you are in for a long process. First, there is a cooling-off period that can last months. Only after this cooling off period will the briefing period begin. It’s similar to mini-litigation in court and can last more than a year. An attorney is highly recommended if you end up in an Opposition proceeding. As such, these proceedings are really only used by parties with the funds and desire to secure or defend their marks.

Post-publication. Once your application has cleared the publication phase, then congratulations! You are almost home! If you have filed a US application as “intent to use”, you will still need to file your specimen, but for everyone else, your mark will register just as soon as the USPTO, UKIPO or EUIPO admin can process it (which is usually just a few weeks).

Once your mark has formally registered, you may get a certificate (if you asked for it in your application in the US), or after you can ask the various offices for one, and for a small fee, they will either send you a certificate or they will certify that it is registered. It is nice if you want to hang it on your wall or show investors, but it is not necessary because a printout from the PTO or IPO websites is considered definitive proof of registration.

So that is it. Now you have your trademark Congratulations, but don't forget that maintenance requirements start popping up in 5-8 years that you should keep your eye on. If you do not maintain your registration with the PTO or IPO after about ten years, you could lose it.

 Also, if your contact information changes or you transfer the mark, you must let the PTO or IPO know so that you can be informed of any issues either from the government or third parties trying to look you up.

Should you have any questions regarding "How to Register a Trademark", be sure to contact our specialist Trademark Lawyers on (UK) +44(0)203 287 9500, (USA) +1(949)431-5438 or make an online enquiry here and we will contact you.