Filing a trademark application is the first step to securing your trade mark. Most traders have a trademark, such as a word or logo, for their business and the best way to seek protection for a trademark is by filing a trademark application.
The basic requirement for trademark registration is that your trademark is able to distinguish your goods and/or services from those of other traders – this means you will generally have difficulty registering trademarks which are overly descriptive of your goods and/or services.
For example, the word “Apple” for computers is an acceptable trademark because apples (ordinarily) have nothing to do with computers. However, the word “Apple” for an apple fruit retailer would not be an acceptable trademark as other fruit traders would ordinarily need to use the word “Apple”. Accordingly, not all trademarks are registrable and some “descriptive” trademarks may experience difficulty during the registration process. We can assist you to determine whether or not your trademark is likely to meet the basic requirements to be registrable.
Australian trademark law also requires that your trademark can’t be the same as or deceptively similar to a trademark already registered by another trader for the same or similar goods and/or services. We typically identify such prior trademarks by conducting a trademark search.
Trademark searching & Potentially Blocking Trade Marks
Before filing a trademark application it is often worthwhile to conduct a trade mark search, including common law marks as well registered marks. If your mark is the same as or deceptively similar to another trade mark, whether registered or not, you may be found to be infringing another parties rights – so it is a good idea to conduct a trade mark search. We can assist in this regard.
If your mark is the same as or deceptively similar to another trademark registered in the same or related goods and/or services, then the previously registered mark may block your registration or require you to put forward evidence to distinguish your mark. Of course, we can assist you to assess if such potentially blocking marks may be overcome or may require you to consider re-branding your business.
If you would like further advice on preparing, searching or analysing potentially blocking trademarks, then please contact us.
Preparing and Filing your Trademark
Once you are satisfied your trade mark is not the same as or similar to another mark, then the application can be filed. Trademarks are filed in one or more goods and/or service classes. The selection of these classes is important and we are happy to assist you in the selection of the classes and provide you with further information in this regard.
Examination, Opposition & Registration
Once your application is filed, the application will be examined and an Examiner’s Report may issue indicating the registrability of your trademark. In some cases, an adverse Report is issued and the objections will need to be addressed before the application is accepted. We can assist to assess and respond to these Reports.
If everything is in order, the trademark will be accepted and enter an opposition period in which a third party can oppose the mark. If the trademark is not opposed, and the requisite fees have been paid, registration is achieved. Again, in some cases, an opposition may be filed in which the acceptance of a trademark is contested by a third party. We can assist in the timely running of an opposition case.
Registered Trademark Attorneys
Caska IP are registered Trademark Attorneys and experts in achieving cost effective and enforceable trademark rights in Australia and overseas. Please contact us for a free initial consultation to learn how we can assist you.
The Take Home Message:
- Distinguish – A trademark should distinguish your goods and/or services.
- Different – A trademark should not be the same or deceptively similar to another traders mark used or registered in relation to the same or similar goods or services.
- Not Directly Descriptive – Trademarks which are overly descriptive of goods and/or services in which you are seeking registration can be difficult to register.
- Searching – check if another person is already using or has registered a trademark the same as or deceptively similar to your trademark.
- Classes – Trademarks are filed in one or more goods and/or service classes.
- Examination – Trade marks are examined and, if accepted and not opposed by a third party, will proceed through to registration.
- Trademark Attorneys – contact IP& for assistance.