The process of registering a trademark must begin with an assessment of the proposed mark, itself, and the mark in relation to the goods or services that are intended to be protected by the registration.
A trademark may be eligible for registration, or registrable, if it is distinctive. Distinctiveness is the ability of a mark to identify a good or service, and to distinguish it from other similar goods or services. At this step of the process, the trademark lawyer should evaluate if the mark has intrinsic or inherent distinctiveness. That is, if it is capable of acting as a mark in relation to other marks in the marketplace. For example, a mark consisting of a single-digit number, an isolated single color or a simple geometric figure is considered to be devoid of distinctiveness, and it is not eligible for registration. In addition, words that are used to designate the goods or services, or words that describe or qualify the goods or services are not registrable.
Once the trademark attorney has determined that the mark itself is eligible for registration, the next step should be to conduct a trademark search. Although a search is optional, its practice is highly recommended. Through the search it is possible to become aware of previous trademark registrations or applications able to interfere with the intended application. With the help of the search report, the trademark lawyer can determine whether the mark has extrinsic distinctiveness (ability to act as a mark in relation to other marks in the marketplace), and to give an opinion on whether the mark is available, or whether it may face obstacles due to previous registrations or applications. The trademark attorney will assess if such obstacles are easy to overcome, or otherwise will advise the selection of another mark.
Once you have a mark that is eligible for registration, and the trademark search has shown that it is available, the next step is to start the registration proceedings, which begin with the filing of the application, along with payment of fees.
When applying for a trademark, care must be taken in the preparation of the listing of goods and/or services that the mark will identify. The listing of goods and/or services depends on the intended use of the mark. The trademark attorney will consult with the client for which goods and/or services the mark is intended to be used. The listing of goods and/or services should include those for which the mark will be used in the short, medium and even long term. The trademark attorney will then proceed to prepare a technical specification of goods and/or services in accordance with the international classification of goods and services under the Nice Agreement.
Once the application has been submitted, the Trademark Office will proceed to conduct a formal examination of the application, in which the Office will evaluate if the application complies with the requirements of the Trademark Law, and if the listing of goods and/or services complies with the classification requirements of the Nice Agreement.
The next step in the registration proceedings is the publication of an extract of the application in the Official Gazette. Once the notice of the application for the mark has been published, any interested party may submit an opposition to the registration of the mark within a period of two months from the date of publication. Having performed a trademark search is of great importance at this step of the proceedings, since the trademark lawyer should have identified potentially conflicting registrations or applications, and recommended the selection of another mark, if in his or her opinion an opposition was likely.
If no opposition was filed, or if one was filed, but it has been overcome, the Trademark Office will proceed to perform a substantive examination. In the substantive examination, the Trademark Office assesses whether the mark has both, intrinsic and extrinsic capacity.
In examining the intrinsic capacity of the mark, the trademark examiner will assess, among others, whether the mark is not the usual designation for the goods or services (a generic mark), if the mark is not the usual shape for the goods or services, and whether or not it is a descriptive mark that describes or qualifies the goods or services that it intends to identify.
The examiner will also asses the extrinsic capacity of the mark by comparing it with prior registrations and applications, and will decide if there is a likelihood of confusion. If the Trademark Office deems that the mark is not registrable, it will issue an Office Action. In such case, the applicant will have two months to submit a response stating the reasons why, in his opinion, the trademark application should be accepted. This is the second reason because a trademark search prior to filing the application should be conducted.
Once a positive substantive examination has been obtained, the Trademark Office will issue the registration certificate after payment of the final fee. The registration certificate must be published in the Official Gazette.
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