3 Ways to Get a Registered Trademark

Comprehensive manual to getting a trademark registered.

Registering a trademark is a complex process, isn’t it?

Unless you are an attorney, it’s very easy to get confused with all these terms “Classification of Nice”, “Basis for filing” and etc. But, do you really have to master these if all you want is ®?

Well, it turns out, getting the registration can be an easy 3-steps online process. Interested? Then keep reading. In this article, you will learn about 3 extremely easy ways to get your brand registered: “Hire us”, “DIY” and “Buy a mark”.

But first, let’s write down some basics (you can skip them if you know these already):

1. There is only one place where you can register your trademark officially. It the Trademark Office! In the US it’s the USPTO, in the European Union it’s the EUIPO and so on. You can get the list of all the Trademark Offices in different countries in the bottom of the article.
2. Trademark registration In the USA takes time, period. The process will not take less than 8 months, don’t trust anyone who tells you that he will get you brand registered in 2 days. Either he lies, or he doesn’t know what he is talking about. In any case, stay away from him.
3. To get a trademark you will have to pay at least the government fee. There is no such thing as a free trademark registration!
4. A minor error in the beginning can destroy your brand in the future. Once your trademark is filed, you can’t correct anything, you can’t add a new item to the list, can’t change the logo, can’t add a new class and so on. 
5. Most likely, you will require a trademark attorney. We unite more than 200 attorneys from 150+ countries.

 

Let’s move to the next part: getting a trademark

1. The fastest way is to buy a trademark

Buy a trademark. Yes! You can buy a registered trademark and this is the fastest option as the brand will be transferred to your within a week and that’s all: you just got a registered trademark. There are some downsides: you’ll have to convince the current owner to sell the mark, the price can be high and you might need a trademark lawyer to prepare an assignment agreement. To make things easier, find below our mind map:

2. The easiest way - hire us

Hire us. That’s it. We will do the work and you will be happy as our clients who publish reviews here. We know what we are doing and can help you to avoid any technical objections and will support you during legal procedures. We use an easy 3-steps online process:

1. Fill out a simple online form
2. Confirm details
3. Bonamark will do the rest

Here’s the deal: Our service is designed to suit the needs of international business and is especially cost-effective if you order several countries simultaneously.We unite attorneys from 150+ countries and make it easy for you to expand into the new markets.

So if you want to get a mark without the hassle you can contact us and we’ll handle the entire process. Obviously, our attorney will charge a legal fee, but you will be sure that the application was filled out correctly and without mistakes.

3. The cheapest way: do it yourself (if you can)

Do it yourself. It’s totally OK to apply for a trademark yourself if you know what you are doing.If you live in the UK there is no need to hire anyone to file your trademark, especially if you are a startup registering its first brand.

The process can be complex in some countries though. And when filing abroad we do recommend hiring an attorney, moreover, it’s obligatory in many countries. Some mistakes might allow your competitor to object the registration. Ideally, you should hire a professional. File a trademark yourself only if you absolutely have no money to pay the legal fees.

You might be wondering: what if I add a letter to an existing trademark? Will it be registered? Fair enough, it won’t. A trademark has to be unique and bring a distinctive commercial impression. If you name your internet search gogle, it won’t be registered and most likely will get you sued. Unique means that it’s not even similar to any existing and registered trademarks. I can’t emphasize this enough: IT MUST BE UNIQUE. We will talk about this in another article as this is a crucial requirement.

Trademarks are not domains. You, possibly, can get a domain similar to a well-known domain, but you will never get a similar mark.

Considering moving forward with the the DIY option? You might need the facts below:

• You can get it at the Trademark Offices of each country. You can submit your request through our service designed to make trademark registration abroad easy and cost-effective; 
• You will have to pay a fee. It depends on a country (from $225 in the US and €850 in Europe); 
• The trademarking process takes from 1 to 36 months, depending on a country; 
• In some countries, the process is more difficult than in others; 
• Trademarks are registered in classes. All products and services are grouped into 45 classes; 
• You will be able to use ® once your mark is registered. In some countries, the use of ® is not regulated.

3.1 What you ought to know before filing a trademark?

Territorial Validity

Trademarks are registered at the Trademark Offices of each country as they are territorial and valid only in the country in which they are registered. You can check the address of your local Trademark Office here.

Why does this matter?

Because there is no such thing as an international trademark. You will have to register your trademark in each and every country of the world to get it protected worldwide. That sounds like a lot of work and it actually is!

Filling out a Trademark Application

If you wish to get your brand trademarked you’ll have to file a special application at the Trademark Office, requesting trademark registration. The application can be filed by an attorney and, in some countries, it is obligatory to hire a licensed professional to handle the registration process. Usually, you will require the trademark agent if you are filing the trademark abroad, in a country in which you do not have an office or a resident address.

Trademark Applications are different in different countries and usually they have to be filled out in the national language of each country: in English in the USA and the UK, in Spanish in Spain and in Russian in Russia.

But there is a catch:

Filling in an application can be a tricky business, especially in the USA. Just look at this 37-pages long Booklet called Basic Facts (sic!) About Trademarks! And the actual list of rules has hundreds of pages.

The worst part?

60% of all applications in the USA receive objections! And only a half of all applications manages to register.

Getting a professional advice is a great strategy in trademarking your brand in this country. Registering a brand in the European Union and the United Kingdom entails a considerably easier process.

3.2 Getting a trademark registration

Getting a name trademarked demands time and money. The process is rather complex, especially it is complex when filing abroad, as you will have to find a reliable attorney and organize foreign payment.

In your country of residence, you can file the mark directly at the Trademark Office of your country. It's not that difficult and, usually, it can be done online.

Abroad, however, you will have to hire an agent to represent you and in some countries, you are bounded by law to hire an attorney to file your trademark. China is a good example, where foreign applicants need a local attorney.

General Requirements to trademark a brand:

1. You have to be entitled to own a trademark;
2. You must use your mark or have a bona fide (genuine) intention to use it. Yes, this means that technically, no one can steal others’ trademarks, but in the reality, it happens all the time;
3. You have to fill in your name and address or the name of your company and the registered address. What is important to know? The address will be published on the register and might lead to receiving a lot of unsolicited mail, you might use your business address for this;
4. The list of products or services you sell. What is the best part? It must be in accordance with the local requirements! The Trademark Offices use a list of standardized descriptions of products and services and if you plan to file your mark for something like “shared bitcoin mining services”, well, you are in a bad shape as the bureaucrats didn’t add it to the list. Each country uses its own list, but some harmonized the descriptions and you can search for them here. But! The USA is special and has a separate list.
5. Determine the corresponding class. The class is important. If you determine the class incorrectly, you will get an objection and will lose the government fee as it is nonrefundable. The class can be determined here: http://tmclass.tmdn.org/ec2/ As was mentioned before, products and services are grouped into 45 classes and if you plan to sell mobile phones, your trademark will be in class 9. It’s not always so straightforward, don’t hesitate to contact us if you need any help.
6. The trademark itself. You have to prepare the file containing your logo according to the standards which exist in the country. Note, that you can’t change the logo after is was filed and make sure that it is correct. The requirements can be found on the website of your Trademark Office.

That’s not as difficult as it sounds! On the other hand, these are basic requirements, the list can go on and on as in some countries (surprise!) they have additional requirements. Especially, in the USA. You might want to read this 36-pages document we mentioned earlier: https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf

Need requirements for a specific country? You can refer to this website, consult with your local Trademark Office or contact us.

3.3 Registration Process

But that’s just part of the story. Once you completed and submitted your application, the official registration process will begin.

Process and the time frame

The basic process is as follows:

Formal Examination: Are the documents in order? Does your trademark application contain any errors? Is the class correct? Is the description acceptable? Are you entitled to hold property?

Similarity Analysis: The examining attorney searches for potentially conflicting trademarks in order to decide if your trademark can be registered. If there is likelihood of confusion with any previously registered trademark, you mark will be refused registration. After the formalities are met, your trademark will be examined in order to determine if it can be registered.

Publication: The trademark will be published in the Official Gazette for the needs of opposition. It means that anyone, who thinks that the trademark shouldn’t be registered can present an objection against your trademark. Usually, other trademark owners who see a brand as a threat to their marks, submit oppositions.

Registration: If there are no prior conflicting trademarks and no oppositions have been filed, your mark will be registered and you will be getting a trademark registration certificate to confirm your ownership of the registered mark. Some countries issue a hard-copy of the certificate, others, like the European Union, have only electronic versions. In any case, your trademark will be protected for a period of time, which is, usually, 10 years.

What does this mean for you?

 You own a property. It is intangible, yet valuable.

4. What should you do after registration?

• Use it. Your trademark is “use it or lose it”. Collect proofs that you use it, you might need them.
• Defend it. If someone files something similar, you should defend your rights and oppose the application.
• Timely renew it. Trademarks are registered for periods of 10 years (7 in some countries and 15 in others) so be sure that you know when you should renew it. In the US you will have to submit a confirmation that you use the TM between the fifth and sixth year.
• Keep all the documents you received from the Trademark Office (TM certificates, for instance) in a dry place
• File your mark in all the countries where you plan to work in the next few years.

Useful links:

1. tmidm.uspto.gov/id-master-list-public.html - the USA list of products/services
2. https://www.uspto.gov/sites/default/files/documents/Basic-Facts-Booklet… - basic facts about trademarks in the USA
3. http://www.wipo.int/madrid/memberprofiles/#/ - List of the Trademark offices
4. euipo.europa.eu/eSearch/ - the official search of EU trademarks
5. tmclass.tmdn.org/ec2/ - the harmonized list of products/services
6. tess2.uspto.gov - the official search of US trademarks