Trademark Filing

Trademark registration is the only way to ensure the strongest legal protection for some of your portfolio's most valuable IP assets, including symbols, logos, company or product names, slogans, sounds and even smells. Your trademarks may not be the most directly profitable intangibles you possess, but they are, by a wide margin, the assets most readily associable with your identity in the marketplace (and in consumers' minds).

What is the purpose of registering a trademark or service mark?

Once you officially register a trademark, you strengthen your ability to take legal action against anyone who uses it without permission. This can take the form of a cease-and-desist letter, a civil suit or an opposition filing with the appropriate trademark office (if any party attempts to register an identical or overly similar mark for the same goods / services). This protection can also extend outside your home jurisdiction if you file an application through the World Intellectual Property Organization (WIPO) Madrid System and in Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement signatory countries. That said, the best way to ensure thorough protection for a trademark is to register it in all of your most relevant markets individually.

Perhaps most importantly, registering a trademark or service mark can provide indefinite protection. As long as a trademark owner files for renewed registration according to jurisdictional law (usually every 10 years), pays all associated costs and meets any other requirements, the mark will remain in force.

What are the risks of letting a trademark remain unregistered?

Though the advantages of filing for registration have clear appeal, these benefits may not be immediately apparent. Attaching the familiar ™ sign after an unregistered trademark is not enough to guarantee its future or defend against infringement. This is because an unregistered trademark receives little to no legal protection, depending on the circumstances.

Another business located fairly close to yours and operating in the same industry might be prevented from using a similar mark based on laws against anti-competitive practices, but the outcome of such a dispute would be far from certain. A valid and enforced registered trademark, on the other hand, delivers far greater chances of success and can extend that defense both nationally and internationally.

Experienced trademark lawyers, such as those at Dennemeyer & Associates offices around the world, make trademark filing much easier and more efficient.

Our legal staff and trusted partners know trademark regulations inside and out, both on a jurisdictional basis and for international frameworks like the Nice and Madrid systems. The trademark lawyers working at and for Dennemeyer & Associates are proficient in filings of every kind, including bulk submissions of entire portfolios and multi-jurisdictional registrations. In working with the experts, you maximize the likelihood of receiving the scope of protection appropriate for your IP strategy.

Can you file for trademark registration without counsel?

It is possible to file for trademark protection alone. The forms are available on most trademark offices' websites (and they encourage online filing). However, this process can quickly become impractical if you are filing a significant number of trademark applications in various jurisdictions.

Filing can be further complicated if you intend a mark to apply to multiple products or services. Although many jurisdictions use the WIPO's Nice Classification system as a standard, navigating the particulars of trademark categories can be challenging. Attempting to hedge one's bets by being overly broad and listing any adjacent product and service categories is not viable unless you can make a legitimate case for doing so. Not only can this be unnecessarily expensive, as filing costs are often tied to the number of classifications selected, but it may also increase your chances of rejection or opposition and revocation further down the line.

Lastly, although there are overarching similarities between trademark regulations across countries, these sets of laws have enough differences to create pitfalls for the unwary. Also, when trademark law does change, it is often in small, easily overlooked ways.

Rejections are always a possibility to consider in the trademark application process. However, they are not necessarily the end of your application. With some advanced knowledge and the right counsel alongside you, a rejection may be a mere speed bump on the road to registration.

What are some reasons that a trademark may not be registered?

For minor issues — obvious typos, confusion about registration classes, etc. — an examiner may call or email you or your authorized representative to request clarification. A written notice may follow so that the issue is formally documented. But, if a trademark office determines there is a serious problem with your filing, the registration process may halt or conclude. This will always coincide with the issuance of an office action, which demands a formal response in a timely fashion if the application is to have any chance to resume.

Mere descriptiveness is a common cause for office actions. Simply put, if you tried to trademark the word "strong" in association with coffee, an examiner would refuse it. In most events, this would require submitting a completely new filing with a modified trademark. The same is often true of an attempt to trademark a last name as a business name or if your specimen of a logo did not accurately depict the mark as it would appear with the relevant goods or services. By contrast, a filing based on a generic phrase or one that would infringe on a currently registered trademark will be refused unequivocally.

What is the typical response process for an office action or initial rejection?

Office actions that are not outright refusals often require a response within two to three months of issuance. This could be a corrected application, a written acknowledgment that you have addressed the matter or a refutation of the examiner's argument. If taking this last route, be sure your counter-argument is solid and detailed.

You are within your rights to appeal a rejection, but your accompanying reasoning must be compelling because denials are usually for reasons like potential infringement or genericness. The inherent complexity of responding to office actions is one of the main reasons why enlisting a trademark lawyer is wise.

Opposition must occur in the window of time between when an IP office publishes a mark (announcing its intent to approve) and when it formally registers the trademark. During this period, anyone can submit a petition to invalidate the pending registration, launching a process that could start and end with mediation. If no solution is found, formal proceedings will begin involving you, the opposing party and your respective legal counsels.

How long do other parties have to oppose your trademark filing before registration is complete?

The opposition window is usually open for one to three months from publication, depending on the jurisdiction. If no one opposes, the trademark will be registered (unless the relevant office requires proof of use, which must then be submitted by the applicant). That said, the office must consider all received oppositions, and how long this takes depends on their number and complexity; in other words, it could be a while.

What are common grounds for trademark opposition, and how can your attorney help you?

Most oppositions have their basis in claims of infringement or some other type of commercial harm to the opposing party. This is another area where the expertise of a Dennemeyer trademark lawyer is invaluable: Your counselor will quickly recognize weak arguments and counter them before judges or arbitrators.

Dennemeyer provides a comprehensive trademark filing service. We are your IP partner throughout the entire trademark life cycle, from trademark searches, filings and prosecution to registration, renewals and anti-infringement efforts.

Additionally, we provide digital solutions: Our Portfolio Management App and DIAMS iQ help you oversee your trademarks within the broader context of your entire IP portfolio.