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Trademark filing looks easy. But can you do it yourself?

08. december 2016

Trademark filing is important to protect your brand name. Before you consider doing it yourself you should check out some of the challenges that lie ahead and what their consequences might be.

Today, all companies and their respective brands are under pressure by the competition, by legislation and by the constant need to capture the consumer’s attention. Your brand name and position are more important than ever, and your brand must be strong in every sense of the word.

At the same time, some Patent and Trademark Offices (PTO’s) tell you that trademark filing is easy and straightforward. And in many ways, it is. The difficult part is getting it right. The Internet and various online forms give you the impression that you can file for registration right away and get your marks registered in seconds. The truth is very different and unfortunately, we see a trend from some national PTO’s to push filings rather than to push for good filings.

Filing without in-depth advice
The national PTO’s are government bodies, tasked with registering and granting. Usually, they are not trained or geared for commercial and legal advising, indeed most cannot give actual advice. Further, the national PTO’s are often measured on their numbers and their performance rather than servicing the need of the actual users.

This may result in filings that should never have been filed because protection was just not there in the first place – e.g. the mark lacked distinctive character, or it would be refused on absolute grounds etc. Hence, the only ones who gain by the filing is the PTO, since they "earn" the application fee.

The process of professionals
Typically, trademark professionals have a step-by-step process which they go through to ensure that the proposed mark will proceed to become a registered ® trademark. An example of such a step-by-step process could be:

  1. Understanding the need of the right-holders as well as their IPR strategy and providing them with expert advice in this regard, both nationally and internationally
  2. Assessment of the mark and the distinctive character of the mark
  3. Conduct a full trademark search in the relevant market(s) – depending on the national legislation this may include factual searches regarding use (which in some jurisdictions – like Denmark – may constitute actual trademark use)
  4. Legal assessment of possible prior rights (including possible assessment of the possibility of a coexistence agreement if prior rights exist)
  5. Legal recommendation regarding whether to commit resources to filing for trademark protection or not
  6. Proceeding with the trademark application process

In other words, once you have been through the process you are on safe ground with a much more comprehensive basis for your decision.

The obstacles of a DIY-strategy
As mentioned, the filing process has become easier, but you will face a variety of obstacles if you choose a do-it-yourself strategy. Some of them being:

  1. Rejection due to absolute grounds, relative grounds etc. (pending on the national Trademark Act)
    The national Trademark Act dictates the absolute and relative grounds for refusal and depending on the national legislation these may impact the process differently. In some countries, relative grounds must be “overcome” by adjusting your application, whereas others mention the relative grounds but proceed with the registration process either way.
  2. Conflicting prior trademark rights
    Some jurisdictions reject trademark applications based on prior rights, which may appear logical. On balance, prior rights may not be in use and since trademarks typically last for 10 years and can often be renewed indefinitely, the mark would prevent registration of a later mark with a legitimate interest in the market as opposed to the mark which may have been renewed but in fact is no longer in use.
  3. The trademark prosecution process in the relevant jurisdiction
    Trademark prosecution can be very lengthy and very costly. Trying to avoid this makes good sense and (if you let them) your trademark professional may be able to do just that – at least to some extent. If you file an application – and it is based on a different trademark system than what you are used to – you may have to spend even more money than expected if you proceed regardless. Using a Danish national application for a US trademark or the other way around will most likely result in some trademark prosecution with the national PTO – be it the USPTO or the DKPTO – but you can handle it the easy way or the hard way.
  4. Choosing the right trademark class
    This is most likely one of the more difficult tasks – especially with the many different trademark systems out there. EUIPO has recently adjusted its practice in respect of the interpretation of the list of goods and/or services on a trademark registration. More and more European national PTO’s are also adopting this approach. Years ago, you just picked the class heading for a given trademark class and then it was assumed that you had protection for all the goods in that class. This is no longer the case due to the ECJ’s ruling in the IP Translator judgement (C-307-10). Now you must consider which good and/or services the mark is being used for and/or is going to be used for within typically the next five years since many jurisdictions have a term of five years for the right holder to commence use of the mark in respect of the listed goods and/or services.
  5. Filing in the right applicant’s name
    Mistakes happen and luckily this is the type of mistake that can typically be sorted out through a few steps. Nonetheless, it means more costs, time and nuisance and in some jurisdictions, the mark may be rejected altogether.
  6. Making sure that the trademark filed for is also the trademark which is being used
    If your client has an opposition filed against one of their trademarks, your first response should be: Please document your rights (including actual use of the mark(s) on which the opposition is based). If the use is not consistent and documented, you may have strong arguments in favour of your case and you may be able to win after all.

The examples above help illustrate the point that even though the filing process might look easy, our advice is to seek professional help with your trademark applications and your IPR strategy. Your trademark professional may ask that one question you have not thought of and which becomes extremely relevant in an enforcement situation down the line. Management of an IPR portfolio requires resources and a systematic and detail-oriented approach if you want qualified and result-oriented advice.