Fact Sheet: Introduction to Trademarks

Trademark Registration

Updated: March 31, 2016

1. Is registration of a trademark mandatory?

The answer depends upon where you intend to use your mark. In some countries, the so-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:
    • Provides a visible deterrent and constructive notice to potential infringers (by use of the ® symbol or the TM symbol).
    • Permits citation of the trademark by the trademark office in decisions on applications to register potentially confusingly similar marks.
    • Allows the trademark owner to grant a valid license to another party to use the trademark.
    • Serves as proof of the existence of a prior right in opposition/infringement proceedings against third parties who are trying to register or using an identical or similar sign.
  • 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 vary from country to country, consult with qualified counsel or the 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 nonprofit organizations, using or proposing to use a trademark to identify his, her, or its goods or services may be entitled to register the mark.

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

Trademarks can be filed nationally, at the trademark office of the respective countries in which they are used or proposed to be used. Some regions, like the EU or the Organisation Africaine de la Propriété Intellectuelle (OAPI)—an alliance of 16 predominantly French-speaking countries—have registration systems that grant protection in all of their member states by one unitary trademark application. Furthermore, currently it is possible to obtain international protection in up to 117 countries worldwide via one single application for a so-called International Registration at the World Intellectual Property Organization (WIPO).

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. There may be instances in which the filing is particularly complicated—for example, the identification of the goods or services for which a trademark applicant needs protection, to the extent that an applicant may wish to seek legal counsel, or is required to. 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 pro se.

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. Under the Nice Classification, goods and services are divided into 45 classes, Classes 1 to 34 covering goods and Classes 35 to 45 services. Trademark registration is obtained by class. In some countries, it is possible to obtain one trademark registration covering all of the classes, and thus all of the goods or services on or in connection with which a mark is 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. Besides the initial filing fees, the applicant may incur additional fees before a certificate of registration is issued. If the applicant employs local counsel, it will be charged 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 will be fees associated with the filing of affidavits of use if evidence of use was not submitted with the initial application.

See also:

Fees for International Registration Applications Under the Madrid Protocol Fact Sheet
Trademark Fees (United States) Fact Sheet
Trademark Fees (Global) Fact Sheet

8. How do I contact a trademark office?

Many 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.

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 countries is to search trademark office records to determine the existence of prior applications and registrations that have effect in that country and that might preclude your use and registration. In countries 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 research firm conduct a thorough search for you. Furthermore, many countries also allow the holders of prior company name rights to prohibit the registration and use of a younger trademark. Therefore, it may be advisable in some instances to include company name searches in your pre-filing clearance searches.

See also Trademark Searching Fact Sheet

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

Yes, this is possible in most countries 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 right holders who 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 professional 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 country, but in most countries registrations must be renewed every 10 years. (An exception is Lebanon, with a registration period of, currently, 15 years.) Moreover, some countries provide for statutory renewal periods counting from the date of application; other countries count from the date of registration. Some countries 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 countries do not require use to be demonstrated upon renewal.

See also Maintenance and Renewal Fact Sheet

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

Many countries, 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 countries, including the United States, a trademark application can temporarily reserve the mark for a party having a bona fide intent to use the mark.

In several countries, a registration can be obtained before the mark is used in that country. In others, there is no requirement that there be an intention to use the mark. Generally, however, if a mark is not used within the first three to five years after 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 said third party and filing suit against that party. An administrative procedure might also 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 professional, who can provide advice as to how to proceed.

Additional Resources

Country Guides: Essential Information on Trademark Protection Worldwide

Searchable database of basic information on trademark filing, prosecution, registration, maintenance and enforcement in more than 100 jurisdictions. Membership required.

 

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