How To Secure A Trademark Application Filing Date – And Secure The Gift Of Time!

Gokcen Uzer Cengelci / Lisa Wright,

Did you know that there are some universal essential requirements when filing your trademark application - but it is unnecessary to always pay fees upfront. Therefore, it is possible to secure that important filing date without having to lay out fees should your decision to pursue the mark change.

Surprisingly, it is not always mandatory to pay an application fee with the application, in order to secure your trademark filing date and gain valuable trademark priority rights and a competitive edge. Each country’s Trademark Office provides a comprehensive list of which items are required to complete a trademark application - as well as a second list of items required to secure the filing date. These two lists do not always read the same.

Trademark rights

Trademark rights gained by registration refer to how early your rights start in a particular country or jurisdiction. Having early priority is important (and is even more important in first-to-file countries) because if several parties dispute over who has the right to use a particular brand name, whoever has the earlier trademark right would have the right to use the trademark. In most countries (without having a priority claim) your trademark rights start from the date of filing a trademark application - so the sooner you file, the earlier your trademark rights begin! 

The role that the payment of fees plays in securing a trademark filing date can vary and is very much dependent on the jurisdiction involved. Different countries do have different requirements when it comes to their national trademark application procedures, but there is some essential, basic information that must always be submitted to a Trademark Office, regardless of the territory that you are filing in.

Trademark application essentials

Wherever in the world you are filing - be it an online or a paper application - at the very least you must always provide your personal contact information, detailed product description information and a representation of your trademark.

Owner information

Depending on the jurisdiction; a local address might be needed or a foreign applicant might appoint a local agent, whose address should be used as the local address, for the service. Moreover, depending on the jurisdiction, joint applicants can be permitted. Applicants can be either a formal legal entity, such as a corporation or LLC, or an individual.

Product description

You must clearly identify the goods or services associated with your trademark in your product description again - depending on the jurisdiction’s regulations - i.e. whether it is a Nice country or having its own classification. The examiners will further evaluate those descriptions before absolute grounds of refusal examination and contact the applicant for further clarification (if needed). It is advisable to only identify goods or services for which you are currently using your trademark, or for which you plan to use your trademark in the near future, depending on your business strategy.

Trademark representation

The trademark application also asks for a representation (drawing) of your mark. A drawing of your mark is a visual image/wording of what your trademark looks like, as a stand-alone, without any other depiction around it and without it being attached to any product. Bear in mind that you may also enjoy filing non-traditional trademarks without using any graphical representation - such as for sound, multimedia or color trademarks - in some particular territories such as the EUIPO. What is of utmost importance is that you cannot change your trademark once you’ve applied.

Trademark application fees

As stated previously, it is not always necessary to pay your trademark application fees at the time of filing to secure your filing date. The International Trademark Association (INTA) provides useful and comprehensive country guides of individual country filing requirements and this includes details on which items from each country’s application list are required in order to secure a filing date.

Examples of jurisdictions that currently require payment of an application fee at the time of filing to secure the filing date include the United States, China and Germany.

Jurisdictions that do not currently require payment to lodge a trademark application and secure a filing date include the European Union and the Russian Federation.

European Union

The European Union Intellectual Property Office (EUIPO) gives applicants one month to pay the required fee to keep the filing date secure and an additional two months to provide any missing information (in this case the filing date will be changed to the date when all the mission information is received).

Russian Federation

The Federal Service for Intellectual Property (Rospatent) has a wider payment window. Rospatent gives all trademark filers eight months to pay their fee. Late payment (during the last six months of this window) does incur a penalty of 50% of the fee as a fine, but it still enables the applicant to keep the same filing date.

Payment ultimately required

Although it may be exciting news to hear that it is possible to secure a trademark application date without having to pay up front fees in some jurisdictions, no matter what, payment is required to complete and solidify your application. 

The application fee must always be paid in order to process your application - no matter where in the world you are filing. Therefore, time is the gift you get, which can often be invaluable!

Search faster

Wherever you plan to file your application, running a robust knockout or preliminary trademark search that will instantly give you strong brand candidates to take forward to clearance is the fastest way to start your journey to brand protection.

You can get the gift of even more time and efficiency by getting results as you type with our trademark research and screening tool - ExaMatch

Now you can eliminate non-starter brand names almost as fast as your marketing team can provide them!

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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.