In general, a trade mark is used to distinguish
one trader's goods or services from another's. A trademark is a word, logo,
symbol, design, or a combination thereof, displayed on wares or associated
with services, to identify the wares or services to purchasers. The
trademark generally indicates that the wares or services come from, or are
approved or sponsored by, the same source as all other wares or services
associated with the same trademark. A trademark may also indicate that the
wares or services meet the same standard of quality as all other wares or
services associated with the same trademark.
The attorneys at MACIPO & ASSOCIATES obtain
clearance, evaluation, selection, and registration of trademarks, including
investigation of availability of proposed marks and third party rights. Our
attorneys can implement a worldwide trademark registration and maintenance
MACIPO & ASSOCIATES also provides counseling in areas of trademark
protection and infringement in selection of enterprise and product names,
and in advertising and marketing operations in all media, including
internet-based communications. We can provide opinions on the legal risk of
adopting a particular trademark in view of other usage.
Prior to using the mark
and/or filing for protection, we recommend that a trade mark search be
conducted in the competent Trade Mark Office
records to determine the availability of the mark. If the search results are
favorable, you should then consider filing a trade mark application for the
The cost of filing corresponding foreign applications varies considerably
from country to country. Foreign applications must be filed within 6 months
of filing the national application if priority is claimed from the national filing date. The cost of filing in
a country and/or region varies, and depends on the number
of classes of goods and services for which protection is sought.
After the application is filed in the
Trademarks Office, it is examined by a Trademarks Office examiner. For
example, the examiner searches for potentially confusing trademarks, and
assesses other potential obstacles to registration, as discussed above. If
the examiner raises no objections the application is approved for
publication in the Trademarks Journal. For an interval after
publication the application is subject to opposition by other parties.
Oppositions, which are relatively uncommon, may for example be based upon
prior use of an allegedly confusing trademark. It typically takes up to a
year to "prosecute" an application through the foregoing stages, assuming
that there are no examiner's objections or oppositions.
After filing a trade mark application, there
are normally further costs associated with guiding the application through
to the registration stage, such as convincing a trade mark Examiner that the
application is one for which a trade mark registration should issue. This
procedure is referred to as prosecution of a trade mark application. The
prosecution costs will depend on the number of objections raised by the
Examiner, if any, and the difficulty encountered in overcoming these
objections. Also, once a trade mark is allowed in some countries/regions there is a
registration fee to be paid.
Please note that the time span between
preparing and filing an application and obtaining a registration is normally at
least twelve months, for example, in Canada.
Before obtaining a trade mark registration, a trade mark user should
identify that its mark (whether words and/or a logo) is being used as trade
mark by including the symbol "TM" beside the mark. The symbol "R (circled)"
should be used for registered trade marks only.