The Next Steps After Filing Your Trademark

Filing a trademark application is only the first step in obtaining trademark protection. Having filed a trademark does not automatically mean it will be granted, and even once it registers steps must be taken to maintain its validity.

My trademark application is filed; does this mean my trademark is registered?

No. Filing a trademark just means that a request for registration has been presented to the local trademark office.

The trademark office will now examine your application in order to determine if it complies with all necessary requirements in order to be granted registration. Furthermore, the trademark will have to be published, after which there will be a period of time in which third parties may present oppositions to the registration (the length of this period varies in each country). Only once the trademark has been examined and accepted by the local trademark office and no third party opposition has been received, will the trademark be granted the legal status of registered. In certain jurisdictions, a final payment of fees is required when the trademark is accepted in order for registration to be granted.

When I apply for a trademark, what does the registration office examine?

The office will examine if the trademark and application complies with all formal and substantive requirements.

Formal Requirements:

• That an actual trademark is filed with the application and that its representation is adequate.
• That in the application the class and description of goods and/or services are stated and correct.
• Full owner details are filed with the application.
• When applicable, that the corresponding Power of Attorney with its corresponding notarization and legalization or apostille is filed.
• In case the applicant wishes to claim priority, supporting documents must be presented at the moment of filing if this is required by the local trademark office.

Substantive requirements:

• In the vast majority of jurisdictions, examiners will check if identical or similar trademarks have previously been filed.
• Trademark distinctiveness. This means that the trademark is capable of differentiating one owner’s or trader’s goods and/or services from those of others. Therefore, generic terms, descriptive terms, indicative terms, deceptive marks, geographical marks, etc. should be refused. Analysis of trademarks will usually be done over the totality of the mark and not in regard to a single element.

Please keep in mind that each local office has different criteria regarding what constitutes an unregistrable trademark. Trademark examination is subjective.

My trademark application was published, what does this mean?

Trademarks are published in order to give public notice that a trademark is seeking registration. This allows third parties that may consider that the registration of a trademark affects their rights to present opposition actions. Therefore, once the trademark is published there will be a period of time in order for third parties to present actions aiming to prevent the registration of your trademark.

The period of time for oppositions to be presented varies in each jurisdiction. Those are some examples of opposition periods, calculated from the publication date:

• USA: 30 days
• Fiji: 2 months
• Brazil: 60 days
• China: 3 months
• Saudi Arabia: 90 days

How can I use my trademark?

You can use your trademark in connection with the goods and/or services for which it has been registered. The trademark may be included on the actual product, on packaging, flyers, posters, web pages, or on any other material that may serve to advertise or offer the goods and/or services for which the trademark has been registered.

When using a trademark in text, it is recommended to represent said trademark in capital letters, bold font or in between quotation marks to allow a clear identification. If the trademark has been registered in the country in which a trademark is used, the registration sign ® should accompany its representation.

Although there may be some leniency in the use of the trademark for goods and/or services that are closely connected with those for which it has been registered, be aware that identical or similar trademarks may be registered for different classes, and therefore, if one uses a trademark in connection with goods or services that are not registered, it may eventually conflict with other trademark holders' rights and therefore constitute an act of trademark infringement.

If you have registered your trademark for determined goods and/or services, and have since then expanded your business to include other goods and/or services, it is highly recommended that you register a new (identical) trademark that includes those goods and/or services. This will not only allow you to safely make use of it, but also to prevent others from doing so.

From what date is my trademark protected when registered?

Trademarks are granted protection once they have been effectively registered. However, the date of registration may in some cases retroactively be considered as the date of filing or application.

This is important because depending on the jurisdiction, the deadline to renew a trademark is calculated based either on the day of registration or the day of application, which can be separated by years in some cases.

How long is a trademark registered or valid for?

Trademarks are registered for periods of 10 years in the large majority of jurisdictions and may be renewed consecutively for unlimited periods of ten years (as a general rule). However, a few jurisdictions have different initial registration periods, meaning the first or consecutive registration periods do not follow the general 10-year rule.

Some examples of different initial registration periods include:

• Cyprus: 7 years
• Macau: 7 years
• Malawi: 7 years
• Nigeria: 7 years
• Uganda: 7 years
• The Bahamas: 14 years
• Fiji:14 years
• Lebanon: 15 years

How do I renew my trademark?

A trademark can be renewed by paying renewal fees and, in countries where a Power of Attorney is necessary, providing a new one.

In most countries, if a different agent than the one on file will be appointed to renew the trademark, a new Power of Attorney will be required.

In the majority of countries, the fees for renewal can be paid a few months prior to the date of renewal. If the renewal fees are not paid before the expiration date, the trademark will lapse. However, in many jurisdictions the trademark can also be renewed after the expiration date subject to the payment of additional fees; these grace periods usually range from 2 to 6 months.

If the trademark expires and there is no grace period or the grace period is over, the only way to ensure trademark protection will be to register again. However, this will be considered a new independent registration, giving third parties the right to file for an identical trademark (once the trademark expires) or to oppose any new registration.

What is a Declaration of Use?

A declaration of use of a trademark is a statement from the trademark owner indicating on what date the trademark was first used, or if the trademark is still being used in connection with the goods and/or services for which it was registered, all within the jurisdiction where the declaration is being required. The declaration must usually be presented in the form of an affidavit or signed with the understanding that willful false statements are punishable by local law.

What is a Specimen of Use?

A specimen of use of a trademark is any supporting evidence such as documents, photographs, brochures, newspaper articles, product packaging, etc. that serves as proof that a trademark is being used in commerce for determined products and/or services in the jurisdiction where proof of use is required.

What happens if a registered trademark is not being used?

In most jurisdictions, the lack of use of a trademark by its owner for a prolonged period of time may be cause for the trademark to be cancelled.

The cancellation may be declared automatically by the trademark office in jurisdictions where periodic demonstrations of use must be filed during a trademark's life span. Such is the case in Haiti, the Philippines, Puerto Rico or the United States.

In many other jurisdictions, the lack of use of a trademark for a prolonged period of time, usually between 3 and 5 years, allows third parties to present cancellation actions against a trademark for non-use.

Depending on the country, the cancellation of the trademark may be for to the trademark as a whole, or only for certain goods and/or service for which it was registered and has not been used.

Examples of countries with cancellation actions based on non-use of a trademark: Algeria, Belize, Bolivia, Canada, China, Colombia, Costa Rica, the Dominican Republic, European Union (European Union Trademarks or EUTMs), Fiji, Guatemala, Hong Kong, Ireland, Japan, OAPI, Peru, Slovakia, South Korea, Norway, Russia, Sudan, Thailand, Turkey, Uganda, U.A.E., United Kingdom.

Therefore, in countries where cancellations for non-use are allowed, a trademark applicant may file a cancellation action if their trademark is being blocked by the prior existence of an identical or similar trademark, thus clearing the path to registration. It is important to signal that excusable non-use (having an excuse for not yet using the mark even though it is registered) exists in the majority of jurisdictions that allow these kinds of actions. Nevertheless, what constitutes excusable non-use and what kind of evidence must be provided varies from jurisdiction to jurisdiction.

"Use it or lose it" is a principle in favor of which more jurisdictions are legislating every year. In very few countries, cancellation actions based on lack of use are still not accepted (e.g. Chile).