From application filing to final registration and beyond, here's everything you need to know about what happens after trademarks are registered.
1. Filing Does NOT Equal Registration
Important: Submitting your trademark application only starts the process, it doesn't grant you trademark rights immediately. Many businesses mistakenly believe they have full protection once they file, but several critical steps must occur first.
What Your Filing Date Provides:
- Priority date for your trademark application
- Basis for claiming earlier rights against later applicants
- Starting point for the examination timeline
- Application number for tracking purposes
What Filing Does NOT Provide:
- Immediate trademark protection
- Right to use ® symbol (you can only use ™ or ℠)
- Legal grounds to stop trademark infringers
- Guarantee of successful registration
2. Examination: What the Office Looks For
Formal Requirements
The trademark office first checks whether your application meets basic filing requirements:
- Trademark specimen: A clear depiction (word mark or logo) must accompany your application.
- Classes & descriptions: Correct class numbers and detailed descriptions of goods/services.
- Owner details: Full name, entity type, address and, in many countries, proof of incorporation or ID.
- Agent/POA: If you use a local agent, a notarized/apostilled Power of Attorney may be required.
- Priority claims: Any priority documents (e.g., earlier filings) must be submitted at filing.
Common Formal Rejections:
- Incomplete applicant information
- Poor quality trademark images
- Missing or inadequate specimens
- Incorrect fee payments
- Improper goods/services descriptions
Substantive Requirements
Trademark examiners conduct comprehensive legal analysis:
- Distinctiveness: Marks must distinguish your goods/services. Generic, purely descriptive, deceptive or purely geographical terms are often refused.
- No conflicts: Examiners search for identical or confusingly similar marks in the same classes (and sometimes related ones).
- Subjective analysis: Each office has its own criteria; what passes in one jurisdiction may fail in another.
3. Publication & Opposition
Once your trademark passes examination, it enters a public notice phase. Opposition windows vary:
- USA: 30 days
- Brazil: 60 days
- China: 3 months
- Saudi Arabia: 90 days
Opposition grounds: Opponents argue likelihood of confusion or damage to their rights. Winning an opposition blocks registration.
Who Can Oppose Your Trademark:
- Owners of earlier trademark rights
- Businesses in related industries
- Companies with common-law trademark usage
- Anyone believing your mark would damage their interests
4. Registration & Effective Date
- Grant of registration: After examination, opposition clearance and payment of any final fees, you receive a registration certificate.
- Protection starts: Generally on the registration date, though many offices allow you to claim your original filing date for renewals and priority rights.
5. Use & Maintenance: “Use It or Lose It”
Trademark rights depend on actual commercial use, registration alone isn't enough to maintain protection indefinitely. Non-use (usually 3–5 years) can trigger cancellation.
- Automatic cancellations: In some jurisdictions (e.g. US, Philippines), offices strike unused marks if use-proofs are missing.
- Third-party petitions: In others (e.g. Canada, EU), competitors must file non-use cancellation actions.
What Constitutes ""Proper Use"":
- Actual commercial sales of goods/services under the trademark
- Advertising and marketing that promotes trademarked products/services
- Licensing arrangements where others use your mark with permission
- Consistent trademark format matching your registration
Excusable non-use: Some offices permit “good cause” defenses, but definitions and evidence vary widely.
Renewals are due roughly every ten years, and missing the deadline or failing to file the required proof of use can cause your registration to lapse, opening the door for competitors to claim your mark.
6. Clearing the Path: Cancelling Blocking Marks
If an existing registration stands in your way but hasn’t been used in commerce, you can file a non-use cancellation petition in many jurisdictions. Over 40 countries, including Canada, China, the UAE, the UK, and several in Latin America offer this remedy.
Successfully cancelling a dormant mark clears the path for your own registration, often saving you from a costly rebrand.
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