Can An America Register A Trademark In The Uk

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

How to register a trademark (trade marking) in the US, UK and European union (Office 2)

17/06/2021

Part 2: Filing and the Application Procedure

In this commodity, we pick up where Function 1 left off: You've done your prefiling checks, and yous're ready to commencement the trademark (or "trade marking" depending on your state) application process.

The awarding class. The US, Great britain and EU each accept their ain unique course to file. However, they seek a lot of the same data, such equally the applicant (your) proper name, address, and contact data. Of form, they also inquire what the trademark is, whether the marking is a standard character mark, or if information technology is stylized with a motion picture and font.

Describing the goods and/or services y'all utilize your mark on and/or for is as well very important. How you draw these goods and services will determine what course you are in (classes were described in Part ane). Some jurisdictions provide you with an online program to help you build your descriptions. If you e'er look at some well-known marks, you will see that many of them take very long and convoluted descriptions. These are usually written by attorneys or merchandise mark specialists trying to capture every bit much territory every bit possible to prevent others from getting too close to their customer'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 information technology. Then sometimes, a clean, accurate and straightforward description is the all-time.

This is also where the biggest difference exists betwixt the U.s. and the United kingdom of great britain and northern ireland/EU – In the US, yous must prove you are really using the marking past stating when you started to apply it and uploading a specimen of your mark in apply – such as a photograph of it on your appurtenances. If you are currently using the marker, you submit this specimen and you lot tick a special box that says it is currently in use. On the other paw, if you lot only intend to use it, you exercise not accept to file the specimen immediately, and you tick the box that says you intend to utilise information technology. 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 y'all receive this, you only accept six months to show that you are now actually using information technology in every class you applied for. If you do non do this, your awarding will neglect. Y'all will besides have to pay a picayune more than to submit the belatedly specimen. In contrast, if you were already using it when yous applied and submitted the specimen from the start, your marker would be registered successfully in one case you lot passed publication. A terminal note on this is that if yous cannot file the specimen within 6 months of the Find of Assart, y'all can ask for upward to five extensions of time to do and 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 take filed your application, an Examiner volition review information technology to make sure it complies with the constabulary. Relatively often, though, the Examiner will detect a problem with the application. Sometimes it is not a big bargain and can exist fixed readily, but other times it can be serious. Either manner, the Examiner will get-go event a Not-Final or Provisional Refusal, also known as an Office Action. The Office Activeness 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 but a phone call to the Examiner can fix it. Notwithstanding, if the problem is serious, you will want to either file a written response making your example or perhaps carelessness the application if y'all do not think there is whatsoever gamble to win. If it is more than than a simple problem and you want to fight, talking to a seasoned chaser is probably a good call.

One time yous accept filed your response, the Examiner volition either agree with y'all, and your application volition keep, or s/he will disagree with you. If southward/he disagrees with you, you lot may go another Not-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 near whether you want to fight it, the process for which exceeds the telescopic of this article.

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

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

If you lot receive an Opposition to your application, this can hateful you are in for a long process. Beginning, there is a cooling-off flow that can last months. Simply after this cooling off period will the briefing period brainstorm. It'southward like to mini-litigation in court and can final more than a year. An attorney is highly recommended if you cease upwardly in an Opposition proceeding. Equally such, these proceedings are really just used by parties with the funds and want to secure or defend their marks.

Post-publication . In one case your awarding has cleared the publication phase, then congratulations! You are almost home! If you have filed a US application as "intent to use", you lot will still demand to file your specimen, just for everyone else, your mark will register simply equally soon as the USPTO, UKIPO or EUIPO admin can process it (which is usually just a few weeks).

Once your marker has formally registered, you lot may get a certificate (if you asked for information technology in your application in the US), or after you can inquire the various offices for one, and for a pocket-size fee, they will either send y'all a document or they will certify that it is registered. It is nice if y'all want to hang information technology on your wall or show investors, but it is non necessary because a printout from the PTO or IPO websites is considered definitive proof of registration.

So that is it. Now you accept your trademark Congratulations, only don't forget that maintenance requirements outset popping up in five-viii years that you lot should continue your centre on. If you practice not maintain your registration with the PTO or IPO after near ten years, you could lose it.

Also, if your contact information changes or you transfer the mark, you must allow the PTO or IPO know then that you can be informed of any bug either from the regime or 3rd parties trying to look you up.

Should you have whatsoever questions regarding "How to Annals a Trademark", be sure to contact our specialist Trademark Lawyers on (Uk) +44(0)203 287 9500, (U.s.a.) +1(949)431-5438 or brand an online enquiry here and nosotros will contact you.