Fast Tracking Your Trademark Application
One of the most frequently asked questions by entrepreneurs and small business owners of their trademark attorney is: “How long does it take to get a trademark?”
For startups and small businesses the decision to trademark can be difficult. For those on a tight budget, money spent on registering a trademark is often overlooked in favor of marketing spend and so many early stage companies put trademark registration on the long finger. This can ultimately lead to businesses looking for a speedy solution to trademark registration, when the right time comes.
Trademark application process
The trademark filing processes of all countries can differ slightly, but they all have a common goal. They aim to provide a right to the owner, in which their sign is distinctive and not descriptive, and also where their trademark will not create any risk of confusion with any prior third party trademarks. Therefore your trademark candidate should be researched thoroughly before you submit an application, to avoid rejection by the trademark examiner and the unnecessary expense of both time and money in having to go back to the drawing board and rework your brand name.
Preliminary knockout search
The recommended first step is to run a quick preliminary knockout search for any exact or semi-exact trademarks found in common law and in the territories and trademark registries of your choice, using our Enhanced Knockout Search tool. Our tool will reveal whether your new brand name is unique enough to move onto the next step of the trademark application process - a full clearance search, or whether you need to rethink your trademark name at this step and go back to the brainstorming stage to find a stronger candidate.
Once you have ascertained that your trademark candidate is “good” you can move along the trademark assembly line and run a comprehensive search against your preferred trademark candidate. Our AI Clearance Search tool can assist you at this step. Our tool will search in all your chosen country registries and will also take common law and web data into account and look for similar trademarks to your candidate. You get a comprehensive report that ranks and analyzes any threats, thanks to our algorithmic scoring of name linguistics and product similarity.
The report enables you to review neat summaries of potential opponents’ portfolios, past oppositions and size and strength. You can also investigate the strength of your candidate brand and its component parts within product types.
Depending on the results of your clearance search and the level of risk that you would like to take with your trademark name, logo or slogan, then an application can be filed.
Filing a trademark application
Depending on the territory in which you are filing, an application can typically be filed either directly by the trademark owner or by an appointed representative (trademark attorney). These applications are usually processed in the order in which they are received by the registry and this can lead to a fairly lengthy waiting period.
Expect a ballpark wait of some ten months on a standard trademark application, depending on the territory. The trademark examiner will need to review and also carry out their own research on your potential trademark, seeking to prevent any risk of confusion with previously registered trademarks by third parties. This will ensure that both third party trademarks and your new trademark will both enjoy protection under trademark law, if it is approved by them.
How to expedite your trademark registration
As previously stated, trademark applications can typically take from between eight to 12 months from filing to registration. It is good to bear in mind that this time period differs from country to country and there might be some countries with even longer trademark processing times. The difference in processing times can occur for many reasons - for example the sheer volume of trademark applications in your chosen registry in a given month - or because trademark prosecution paths can differ from country to country.
When it comes to prosecution pathways there are three key factors to consider. Firstly, in some countries, trademark prosecution paths may also cover fast track applications.
Secondly, an application-registration-publication path (found for example in Finland) allows for a faster registration, but opposition to your new trademark starts immediately after publication.
And, lastly the scope of examination held by examiners also differs from country to country. Some countries also allow examiners to control the risk of confusion from prior trademarks, so the examination stage takes longer, to allow them to account for this assessment during their examination.
This can feel like a very long time for some businesses, who would like to hit the ground running with their new brand. In some limited circumstances a trademark application can be expedited so that registration completes significantly faster.
If your business intends to market or sell its goods or services in a territory in which expedited applications are permitted and you think that it would be of benefit to your overall business strategy to apply for accelerated examination, then you should take a look more closely at the option to speed up your trademark application where this is possible. The main difference between regular and fast track applications is that these accelerated applications are processed in half the time or less, when compared to regular applications.
Where is accelerated examination accepted?
Currently you can accelerate examination of your application in a limited number of country registries as the process is linked to legitimate reasoning. It is important to note that each individual country registry has its own criteria and fast track application process. Therefore you should investigate or ask a local trademark attorney for advice and prepare well in advance of making your accelerated application. You may need to pay an additional fee and/or state your rationale behind the request for a fast track decision by the examiner.
Other countries, like Norway and Finland seek a reason (which is again regulated) as to why you are applying for an accelerated trademark application and do not apply an extra charge. Whereas other countries only provide this procedure within a prescribed rationale, like the USA.
Some may also levy an additional fee for this expedited service. In Germany no reason is requested by the German Patent and Trade Mark Office (DPMA) however the registry does levy an additional charge for this service.
Some countries, like Turkey, do not charge an additional fee for an expedited trademark application, because it might contravene their constitution - namely the principle of equality, thus they do not have any similar process.
Although the European Union Intellectual Property Office (EUIPO) does not allow for any specific request to fast track applications, it does also automatically account for these through its harmonized database (HDB), if certain conditions are met. The HDB sets out a list of all of the terms which the EUIPO finds to be acceptable for specification purposes.
By selecting predefined acceptable terms, the examination procedure time is reduced because the specification does not need to be reviewed for accuracy by the trademark examiner. And, predefined acceptable terms have already been translated into all other EU languages (except for Irish) which also reduces the time from acceptance to registration. Fast track applications can complete registration in as little as four to five months.
According to the EUIPO’s website there are two main criteria that your application will need to meet:
- “You need to select the goods and services your trade mark will apply to from a database of terms that have already been accepted by the EUIPO”. (All predefined terms have been approved by the EUIPO and all IP offices in the EU).
- “You need to pay upfront” (their examiners can only start examining your application once payment is made).
If an objection is raised by the examiner against the mark itself (for example if the mark is held to not be distinctive enough or to be descriptive), then a fast track application will no longer be able to be accelerated through examination.
The United States Patent and Trademark Office (USPTO) also allows for accelerated examination of trademark applications. The USPTO requires that you first file a petition requesting special treatment of your application. It is important to note that a petition to make an application special must be filed only after you file your trademark application, but before the initial examination. This could save you around two and a half months in the examination process.
An additional fee for this acceleration is not required. According to instructions found on the USPTO website, the petition should also be accompanied by an explanation of why special action is required, as well as a statement of facts. This statement of facts should be supported by an affidavit or declaration.
You should always consult with a trademark professional before filing this kind of application and if you are a non-U.S. domiciled applicant you will need to hire a U.S. qualified trademark attorney to file your accelerated or regular trademark application on your behalf.
Start your accelerated trademark search today
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