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Trademark Basics

What can be Registered as a Trademark

A trademark can be any sign that is reproducable on paper, like a word or logo.

Before Filing a Trademark Application

In contrast to a patent application it is not necessary to keep your trademark secret. You may even use your mark to test the acceptance of the market. But be aware of trademark trolls which may try to protect your name and sell it back to you.

A good trademark should be distinctive over the competitors trademarks in your field.

First identify the markets geographically in which you want to use your trademark. Do you already use the Trademark in some of the markets? Do you plan to expand to further markets? What is the time scale?
This information is important for defining the filing strategy. Based on this information we can help you to find a cost optimized solution for your needs.

Prepare a listof all goods or services you want to label with your trademark. This facilitates and accelerates later preparation of the application.

Preparing a Trademark Application

As a basis for preparing a Trademark application a search for older trademarks should be conducted. First this helps to make sure that your trademark does not infringe earlier registered trademarks. This knowledge is important to avoid time consuming and expensive litigation or opposition procedures. Furthermore at this stage the mark and its list of goods of services may be corrected to avoid any conflicts.

After this search the list of goods and services has to be prepared. It should contain all the goods and services you are using or will use in the future. There are some formal standards for such lists of goods and services like the classification according to the Nice Agreement.

First Filing of a Trademark Application

There are several options for the first filing of a trademark application:

1.  DE filing with the GPTO

  • Cheapest option
  • Examination report within 3 to 10 months
  • Only German language
  • A German Trademark may be registered

2.  EU filing with the OAMI

  • More expensive than DE filing
  • Examination report between 3 and 8 months
  • Languages: English, French, German
  • A European Trademark may be registered

Later Filings

Latest within six months after the first filing you may initiate either

1.  National Filings

  • National filing at national patent/trademark offices in most statest of the world; or

2.  EU Filing

  • EU filing at the OAMI which can result in a registered CTM mark.

3.  IR filing with the WIPO

  • National Registration which can be extended to most states of the world.

Claiming the priority of the first filing allows the later filings to receive the filing date of the first filing.

Examination and Registration

In most states trademark applications are formally examined by the Patent Office. There an examiner reviews the trademark application and checks whether it meets the national formal requirements. Often an adaption to the national lists of goods and services is necessary. Then the examiner issues an examination report. If the examiner finds any formal defects you may amend the list of goods and services and file arguments. Again the examiner will review the amended application and the arguments. These steps may repeat several times according to the national law. Then finally a trademark is registered or the trademark application is rejected. In some states the examier also searches for older national trademarks. There may be additional amendments necessary to avoid any confusion with these older marks.

Making Use of Your Trademark

A registered trademark permits you to prohibit any third person to make use of your trademark. Your competitor’s labels must distinguish significantly over your trademark. Thus, with a registered trademark you can make sure that your clients can distinguish your goods and services from those of the your competitors.

Often two competitors use similar labels without knowing about each other. A registered Trademark can help you in proving that you have the earlier rights.

You may install a Trademark watch in the relavant registers to be aware of later similar trademark registrations. This permits you to keep you competitors at distance using the cheap opposition procedure.

Munich – location of the Patent Offices

The European Patent Office and the German Patent and Trademark Office are headquartered in Munich. For this reason we have our Office in Munich. more…

The description above shows the typical options and is based on our experience. It is no legal advice.