by Traverse Legal, reviewed by Enrico Schaefer - May 20, 2009 - Uncategorized
This international panel provided valuable tips and tricks on filing strategies throughout the world. Attendees learned how to avoid common pitfalls and how to provide useful and informative instructions and obtain the best results from foreign associates.
Moderator:
Speakers:
Regardless of the country in which you would like to file for a trademark, the process is essentially the same. The steps include:
You must first determine where you will be using your goods/services and the mark associated therewith. Identifying a list of the countries, prioritizing them based upon product or service launch date, and recognizing opportunities for expansion are critical.
Once a country is selected, a trademark search should be conducted. Search software such as CT Coresearch or Thomson’s appeared to be the predominant search software used by the trademark attorneys. Regardless, the search should include the country’s register, trade names, and common law uses. A United States search may also include state registrations. However, a state registration can be treated like a common law mark because state registrations require no substantive examination, many parties do not bother to acquire them, and may be limited in terms of geographic scope or actual use.
When it is time to file, identify whether a Community Trademark (CTM) for the European Union is worthwhile. It may be expensive to do a search of all 27 Member States of the EU, so you may choose to simply search the CTM database and the Member State in which you will be predominantly using your mark. Although this is not the ideal practice, cost limitations often make it the standard practice.
When it comes time to file, do not file actual use along with an intent to use in one application because it will hold up the application (for a USPTO mark). If you, as a trademark attorney, inherit an application that contains both, a Request to Divide should be filed. When fiiling a CTM application, remember to select two languages. You can select up to 3 international class designations. Keep in mind that you can use seniority of a registered mark even if the CTM is filed thereafter. Any member of the EU, can file a CTM. However, a U.S. attorney can not file a CTM directly, but rather must have an licensed agent in the EU to file a CTM.
Assuming no oppositions or other issues, the mark will be registered. Fortunately, the CTM no longer requires a registration fee, and instead the only fee paid is the filing fee. Depending upon the country, proof of use may not be required for renewals.
Ultimately, an experienced trademark attorney familiar with the laws of the country in which you seek protection is necessary.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
