Hi everyone! As always, we’ve rounded up some of the top stories in the foreign filing/patenting space from the past week. Here’s a glimpse:
- Check this out: “USPTO Releases New Patent Term Calculator” enabling innovators to estimate the expiration date of their patent.
- China is proposing amendments to its current trademark law, including a dramatically shortened registration process for applicants.
- Here’s another look at the unitary patent timeline as the European courts begin the implementation process.
- Millions of Americans are gearing up for Super bowl Sunday this weekend. Here’s a trademark-related story for the occasion!
It’s hard to believe we are already a month into the new year! Keep in touch by leaving your comments below or tweeting us at @inoviaIP.
Earlier this month we announced the launch of our new trademark search and registration service, which is available on our website. Using our trademark search engine, applicants and attorneys can search more than seven million U.S. trademarks for free and register their marks at a low, flat cost.
If you’d like to try it out, start by running a “knockout search,” which will reveal only trademarks in the most relevant classes to your product or service category. If you’re unsure of what class your product or service falls into, don’t worry – our tool will help you identify the categories relating to your product or service and then assign them to the appropriate class(es).
If you’d like to learn more about trademarks and/or the trademark registration process in the U.S., you can download a free guide. Alternatively, here’s a brief overview:
What is a trademark?
A trademark is a word, phrase, logo, color, sound or smell that is legally registered to distinguish the goods and services of one company from those of others.
When you apply for a trademark, you must assign it to a particular goods and service “class” (e.g. “Telecommunications”) as defined by international convention. Your registration is then limited by the goods and services listed in your application.
Trademarks protect distinctive marks, so it’s very difficult (and sometimes impossible) to register something already in use by someone else or something that is descriptive.
Once registered, the trademark is protected for 10 years and can be renewed indefinitely thereafter.
What types of marks can be registered?
A registered trademark is a powerful legal right. Understandably, there are some limits on what can be registered.
In most cases a trademark will be a word, a phrase or a logo (which might also have words in it). Trademarks that are:
- not similar to a brand already in use; and
- not descriptive of your goods and services
have the best chance of being registered without any issues. Using our free trademark search tool, you’ll be able to quickly determine whether your mark is already in common usage (but this tool is obviously a guide only!).
Some trademarks are more difficult to register (and in some cases, impossible), such as:
- Trademarks that are identical or very similar to earlier filed trademarks for similar goods or services
- Descriptive terms, such as “shoe” for shoe products or “apple” for fruit
- Common surnames and geographical place names
- Words or phrases that favorably promote goods or services, such as “Best Quality”
- Words or phrases common to trade, such as “On Sale”
- Marks that are scandalous or misleading
- Some marks are protected by law and cannot be registered, such as the word “Olympic”
What goods and services should I include in my application?
As mentioned above, trademarks are registered for particular goods and services, so your legal rights are limited by the goods and services you include in your application. Registering your trademark for “t-shirts” doesn’t prevent someone also using your trademark for “medical services.”
It’s a requirement that your goods and services are correctly classified into one of the 45 different trademark classes. The classes are general groupings of different, but related, goods and services. If you don’t get this part right, your application will likely be rejected.
But don’t worry – if you’re running a search on our website, simply provide us with a description of your product or service category and our tool will do the rest.
What is the trademark registration process in the U.S.?
The registration process in the U.S. is very similar to other countries and is, in part, governed by international treaty.
There are two key points to remember:
- Trademarks are registered on a “first to file” basis, meaning that if someone else puts in an application before you, chances are you will miss out and won’t be able to use your trademark.
- In most cases, once your trademark is registered, protection begins retroactively from your application date. This is another reason to get your application in early.
Once the application is lodged, the trademark office examines the application, looking for potential issues including whether the description of goods and services is sufficiently clear and is in the correct category. If the application is accepted, it’s then advertised for an “opposition period” allowing others to object to the registration. Objections are very rare, with most applications moving directly through to registration.
In the U.S., registrants must show evidence of use of the mark in interstate commerce within 6 months from the notice of acceptance. This can be as simple as showing a picture of the mark on the good at the point of sale.
After your mark is registered, you’ll receive official confirmation of registration and you can start using the ® symbol together with your trademark for the relevant goods and services.
Ready to get started? Click here to give our new tool a try.