7 Steps to Successful Trademark Registration

Gokcen Uzer Cengelci / Lisa Wright,

Your brand might very well be your business’s most valuable commercial asset. The globalization of commerce and the connectivity of the digital age that we all live and work in, has broadened the reach of brands on a massive scale. A strong brand, with universal, global appeal is now worth its weight in gold to the savvy business owner.

Protect Your Intangible Assets

In response to this increase in the commercial value of trademarks, there has been a steady, incremental rise in legal activity around the protection of trademarks in many countries and territories.

Arguably, one of the very first strategic steps in brand protection, regardless of whether you plan to trade in countries that use the ‘first to file’ or ‘first to use’ rule of trademark application, is to register your trademark. In this regard, turning ideas into assets can be a time-consuming and expensive task. To get you started, we have put together a road map - seven steps to be used as a guide to your successful trademark registration.

7 Steps to Success

  1. Brainstorming
  2. List your potential trademark candidates
  3. Preliminary trademark search (exact match and semi-exact match searches)
  4. Similarity search (to identify the similarity risk of your candidate to existing trademark names) to ensure you proceed with the strongest candidates. (The search scope will depend on how much risk the business would like to take)
  5. Approval by a trademark professional (recommended)
  6. Filing of your trademark application (depending on the territory, the application may need to be done by an attorney)
  7. Successful trademark registration!

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Once you acquire your trademark rights, it is crucial to remember that your trademark(s) will then need to be actively used, monitored and renewed! You can find out more about how to monitor and renew your marks here.

Preliminary Knockout Search - in Seconds

After you have narrowed down your candidates in brainstorming sessions and you have created your list of “good” candidates, as the next step you should consider continuing with a preliminary online knockout search of your mooted trademark names (Step 3). Our robust knockout search tool allows you to instantly see if the exact and semi-exact names are already being used by other companies in your region(s) of interest. Incorporate all possible territories that you are planning to serve with your brand in your preliminary knockout search. 

If you find any potential conflicts during your knockout search best practice would be to return to the brainstorming stage and select a new candidate. 

Similarity Search

If there is no risk identified during your knockout search you have then two options. Which option you choose will depend on how much risk your business would like to take and will also depend on time management - specifically how time sensitive your project is. 

The first option (and most recommended) is to then conduct a similarity search (Step 4). Our AI clearance search tool will automatically enable all kinds of criteria, with the sole aim of reducing the risk of unknown information coming to light, before you go ahead and file your mark. This process will reduce the risk of your application being rejected at the final stage and saves you both time and money from application “do-overs”. 

Minimize Risk

Once you file an application, you can't change or even slightly modify your trademark. If there are any obstacles regarding the sign, you will have to start over with a new application (costing you time and money). So it is extremely important that you get a clear understanding of risk at this stage.  After eliminating “risky” trademarks through a knockout search and then running a similarity search is the best way to minimize risk when moving forward with a particular mark(s). 

As a second option, if you are limited for time and you have not identified any unacceptable level of risk or threat to your candidate (i.e. no exact or semi-exact names appear during your knockout search), you can consider moving your candidate straight to the approval stage of the process (Step 5) for further analysis by a trademark professional. 

Legal Opinion

You can conduct the initial clearance search by yourself, but it is always recommended to then seek out the advice and services of a legal professional, who will give you an informed opinion on your results in the subject territory, and move your mark onto the final stage of the road map - filing your trademark application at a trademark registry (Step 6). 

Protecting Your Trademark Through Registration

As previously stated, independent of the acquisition of a trademark right derived from use or registration, typically the most prudent way to protect your brand is to file a trademark application before a trademark registry.  

If you have successfully navigated your way to Step 6 and you are ready to file a trademark application what are the requirements? You need to have decided on the form/graphical representation of your trademark that you want to protect. Once you file your trademark, you will get trademark rights only over that version of the mark.  In addition you must be able to describe or define the goods or services that you will provide under the mark in your application. Your description will be very important, because in most territories the trademark world is divided into 45 international classes, called Nice Classes, that help to characterize your goods and services. These classes are used as an index at Step 3 and Step 4 (during your search) and you will also be required to define the class(es) that you wish to file under at Step 6 (application stage).

Finally, you should note that, depending on the territory that you are planning to file in, you may need to employ the services of a trademark attorney to file on your behalf. (As an example, in the U.S. foreign trademark applicants need to assign a U.S. attorney). We would highly recommend that you employ a trademark attorney to file on your behalf wherever you are filing.

Start Your Journey to Trademark Registration

Discover today how TrademarkNow can assist you during your trademark clearance journey. Our self service online knockout search tool can empower you to bring your mark through the very first stages of the trademark application process. And, our AI clearance search tool can help you to understand all kinds of risks, enabling you to clear your search seamlessly and securely - in seconds!

ACCESS PRESENTATION

By Gokcen Uzer Cengelci / Lisa Wright
Gokcen Uzer Cengelci, Trademark Counsel at TrademarkNow, worked as a trademark attorney for over 12 years in top-tier trademark law firms where she specialized in opposition procedures and trademark portfolio management strategies. She regularly publishes articles on trademark law and has a deep interest in the role of legal tech in IP. Lisa Wright, Content Writer at TrademarkNow is a graduate of the University of Law. She researches and publishes books, articles, and webinars on global IP law and trademark activity.

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