Fact Sheet: Introduction to Trademarks

Trademark Registration

Updated: April 1, 2021

1. Is registration of a trademark mandatory?

The answer depends upon where you intend to use your mark. In some countries, often called “‘first to file” countries, registration is mandatory to obtain rights in a mark. In other countries, use of a mark establishes protectable rights in the mark, even if it is not registered.

2. What are the advantages of registering a trademark?

Trademark registration affords several advantages, including the following:

  • It provides a visible deterrent and constructive notice to potential infringers (by use of the ® symbol or similar symbols);
  • It permits citation of the trademark by the trademark office in decisions on applications to register potentially confusingly similar marks;
  • It allows the trademark owner to grant a valid license to another party to use the trademark; and
  • It serves as proof of the existence of a prior right in opposition or infringement proceedings against third parties that are trying to register or use an identical or similar mark.

A registered trademark will likely be disclosed in a search conducted by a third party for a similar mark, alerting that party to a potential conflict with the earlier registered trademark.

In some countries, registration is required in order to enforce rights in the mark against infringers.

Because the advantages of trademark registration vary from country to country, it is advisable to consult with qualified counsel or local trademark authorities concerning each country in which use or registration of a trademark is desired.

3. Who can register a trademark?

In general, any individual, organization, or governmental or business entity, including non-profit organizations, using (and in some jurisdictions, proposing to use) a trademark to identify its goods or services is entitled to register a trademark.

4. How can I file a trademark application?

Trademark applications can be filed nationally at the trademark office of the respective countries in which they are used (and in some jurisdictions, proposed to be used). Some regions, like the European Union or the Organisation Africaine de la Propriété Intellectuelle (OAPI)—an alliance of 17 predominantly French-speaking Sub-Saharan countries—have registration systems that offer protection in all their member states via one unitary trademark application. Furthermore, it is possible to obtain international protection in up to 122 countries worldwide via one single application for an International Registration through the Madrid System that is administered by the World Intellectual Property Organization.

5. What are my options if I cannot afford a trademark attorney and wish to file a trademark application?

Most trademark registries do not require trademark applicants to be represented by an attorney. However, if the nature of the filing is complicated, consulting an attorney would be beneficial. Companies and individuals wishing to file applications themselves should check the website of the trademark office of the country in which registration is sought to confirm that an application may be filed directly by the applicant.

6. Is it necessary to obtain separate trademark registrations for each of the goods or services on or in connection with which a particular trademark is used?

It is not necessary to obtain a separate trademark registration for each good or service on or in connection with which a particular trademark is used or is proposed to be used. Under the Nice Classification, goods and services are divided into 45 classes, Classes 1 to 34 covering goods and Classes 35 to 45 covering services. Trademark registration is obtained by class and can include multiple goods or services that are contained in a class. In some countries, it is possible to obtain one trademark registration covering all the classes for all the goods or services on or in connection with which a mark is used or proposed to be used. In other countries, a separate registration is required for each class of goods or services that needs to be covered.

7. What are the fees for filing a trademark application?

Filing fees vary by country and filing system. The amount usually depends upon the number of classes covered by the application. Beside the initial filing fees, the applicant may incur additional fees before a certificate of registration is issued. If the applicant employs local counsel, there will be fees for preparing the application. Some countries also require the payment of publication and registration fees. Finally, in countries where use of a mark must be shown before an application will mature to a registration, there are fees associated with the filing of affidavits of use if evidence of use was not submitted with the initial application.

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8. How do I contact a trademark office?

Most trademark offices have a website through which they can be contacted by individuals. Some of these offices allow individuals to file trademark applications and make simple responses to office actions (i.e., letters requesting information or amendments to aspects of the application). Most of these offices can also be contacted by post or by telephone, the details of which are available on their respective websites.

9. Must I conduct a search before filing for a trademark registration?

In most jurisdictions, a search is not required before filing an application to register a trademark; however, conducting a search is almost always advisable. Searching to ensure that the mark (or a similar one) is not already registered or in use by another for the same or a similar product or service can help avoid the investment of time, energy, and money in adopting a mark that may have to be abandoned if a conflict is discovered later. The first and most important step in all jurisdictions is to search trademark office records to determine the existence of prior applications and registrations that have effect in that jurisdiction and that might preclude your use and registration. In jurisdictions that recognize common law rights, you should also try to determine whether your proposed mark has been used in the marketplace by conducting online searches and/or having a professional trademark search firm conduct a thorough search for you. In addition, many jurisdictions also allow the holders of prior rights in a company name to prohibit the registration and use of a later trademark which is similar or identical to that earlier company name. Therefore, it may be advisable in some instances to include company name searches in your pre-filing clearance searches.

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10. Can the same mark be registered to different parties in the same jurisdiction?

This is possible in most jurisdictions as long as the marks are used in connection with goods and/or services that are easily distinguishable and there is no likelihood of consumer confusion in the marketplace. It is also important to note that in some jurisdictions, earlier rights holders that enjoy a reputation in their marks can prevent use and registration of a similar later-filed mark on different goods and services in certain circumstances. If you are concerned by an earlier registration, it is recommended that you seek legal advice.

11. How long does a trademark registration last?

A trademark registration is perpetual as long as the registration is renewed periodically. Registration periods vary by jurisdiction but in most jurisdictions, registrations must be renewed every 10 years. Some jurisdictions provide for statutory renewal periods counting from the date of application; other jurisdictions count from the date of registration. Some jurisdictions require use to be demonstrated upon renewal or during certain specified periods in order to maintain a registration. Without such use, it may not be possible to renew. Conversely, other jurisdictions do not require use to be demonstrated upon renewal.

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12. Can I protect my mark if it is not registered?

Many jurisdictions, including the United States and Canada, provide some common law rights for unregistered trademarks, ultimately allowing the first user of a trademark to claim enforceable exclusive rights. If you plan to rely on this type of protection, it would be wise to contact a trademark professional for specific advice and strategy planning.

13. Can a trademark be reserved?

Generally, yes, but only for a few years. In many jurisdictions, including the United States, a trademark application can temporarily reserve the mark for a party having a bona fide intent to use the mark.

Generally, however, if a mark is not used within a specified length of time (often between three and five years of its registration), a third party can apply to cancel the mark for non-use.

14. What can I do if I think someone is infringing on my trademark rights?

There are a number of ways to dispute the use of your trademark by a third party, including sending a cease and desist letter to the third party and filing proceedings against that party. Also, an administrative procedure might be available where the third party has registered and is using a domain name that is confusingly similar to your trademark. If you feel that your rights are being infringed, it is recommended that you seek assistance from a trademark professional.

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