Hi alsinger,
You're going to become very familiar with the United States Patent and
Trademark Office's website because everything you'll need is there,
even an online application.
YOUR QUESTIONS
-> USA
1. To which authority does one go for registry:
United States Patent and Trademark Office:
http://www.uspto.gov/main/trademarks.htm
Where to Start?:
"There are several resources within the USPTO website. These include
information as well as online capabilities for every stage of the
registration process. In fact, you can conduct most of your trademark
business with the USPTO online.Therefore, you should familiarize
yourself with our site before you begin the trademark application
process."
Filing a Trademark Application
"You may file your trademark application online using TEAS e Biz - the
Trademark Electronic Application System. TEAS allows you to fill out
an application form and check it for completeness, and then submit the
application directly to the USPTO over the internet. You can pay by
credit card, through an existing USPTO deposit account, or via
electronic funds transfer."
http://www.uspto.gov/web/trademarks/workflow/start.htm
2. How much does it cost ? First registration and annual fees ?:
"The current fee for filing an initial trademark application for
registration is $335 per class of goods and/or services. If your
application is filed based on a bona fide intent to use the mark in
commerce, additional forms and filing will be required at a later
time. You may obtain the current schedule of fees at
http://www.uspto.gov/go/fees/index.html "
http://www.uspto.gov/main/faq/index_feefaq.html
Fee Schedule [see pink section at bottom of page]:
http://www.uspto.gov/web/offices/ac/qs/ope/fee2004apr01.htm
3. How long time (months) does it take to register?:
"All future correspondence with the USPTO must include this serial
number. You should receive a response to your application from the
USPTO within five to six months from filing the application. However,
the total time for an application to be processed may be anywhere from
almost a year to several years, depending on the basis for filing, and
the legal issues which may arise in the examination of the
application."
http://www.uspto.gov/web/trademarks/workflow/start.htm
4. A couple of names of agencies/bureaus/consultants who would be
specialists in doing the work ?:
The USPTO was designed in such a way so that an ordinary citizen would
be capable of filing the application for themselves.
Can I do my own trademark search?
"Yes. You can do your own search for free on the Internet by visiting
the U.S. Patent and Trademark Office's website at
http://www.uspto.gov. Or you can visit one of the Patent and Trademark
Depository Libraries, available in every state. These libraries offer
a combination of hardcover directories of federally registered marks
and an online database of both registered marks and marks for which a
registration application is pending. Most of these libraries also have
step-by-step instructions for searching registered and pending marks."
Would it be better to have a professional firm conduct my trademark search?
"Many people do prefer to pay a professional search firm to handle a
trademark search. This can make sense if your financial plans justify
an initial outlay of several hundred dollars, the minimum cost for a
thorough professional search for both registered and unregistered
marks. Depending on the search firm, you may also get a legal opinion
as to whether your proposed mark is legally safe to use in light of
existing registered and unregistered marks. Obtaining a legal opinion
may provide important protection down the road if someone later sues
you for using the mark"
How do I find a professional trademark search firm?
"The best place to start is the Sunnyvale Center for Invention,
Innovation and Ideas, on the Web at http://www.sci3.com. This Patent
and Trademark Depository Library conducts full bore trademark searches
at very competitive prices."
"Professional search firms can be found in the Yellow Pages of the
nearest good-sized city under Trademark Consultants or Information
Brokers. Or, you can consult a legal journal or magazine for your
area. In these journals, you'll find the ads of a number of trademark
search firms -- the ads are aimed at lawyers, but many will also do
searches for individuals and businesses."
"For direct hit searches -- finding out whether your proposed mark is
already registered or pending in the Patent and Trademark Office --
expect to pay between $25 and $50 per mark searched. For more complete
searches of registered and pending marks -- finding out whether there
are any similar marks that consumers might confuse with yours --
expect to pay between $75 and $200 per mark searched. For a complete
search of registered and unregistered marks, expect to pay between
$250 and $500."
http://cobrands.business.findlaw.com/intellectual_property/nolo/faq/79BB0841-5898-40C3-A441E98A7494A853.html
-> INTERNATIONAL
Luckily, there is an international treaty in place which will make
your job of registering your trademark abroad relatively easy. You'll
find a nice outline of the steps needed here:
PROCEDURE FOR INTERNATIONAL REGISTRATION BASED ON U.S. APPLICATION OR REGISTRATION
STEP 1: Ensure that the U.S. qualifies as the applicant?s ?country of origin?.
STEP 2: File a standard trademark application at the USPTO (or own a
U.S. registration).
STEP 3: File a Protocol-based application (an ?international
application?) at the USPTO.
STEP 4: USPTO evaluates (and hopefully certifies) the international application.
STEP 5: International Bureau checks (and hopefully registers) the
international application.
STEP 6: Designated Contracting Parties have chance to refuse
registration in their country.
STEP 7: Maintain the basic application/registration and the
international registration.
http://www.pillsburywinthrop.com/spotlight/madrid/procedures.pdf
Madrid System for the International Registration of Marks:
"The Madrid system of international registration of marks is
applicable among the countries party to the Madrid Agreement or the
Madrid Protocol.
This system gives a trademark owner the possibility to have his mark
protected in several countries by simply filing one application with
a single Office, in one language, with one set of fees in one currency
(Swiss francs).
An international registration produces the same effects as an
application for registration of the mark made in each of the countries
designated by the applicant. If protection is not refused by the
trademark Office of a designated country within a specified period (12
or 18 months), the protection of the mark is the same as if it had
been registered by that Office. The Madrid system simplifies greatly
also the subsequent management of the mark, since it is possible to
record subsequent changes (such as a change in ownership or a change
in the name or address of the holder) or to renew the registration
through a simple single procedural step with the International Bureau
of WIPO. Further countries may be designated subsequently."
http://www.wipo.int/madrid/en/index.html
1. To which authority does one go for registry:
Filing an international application
"An application for international registration must be presented to
the International Bureau through the Industrial Property Office
(Patent Office) of the country of origin (referred to as the "Office
of origin"). The International Bureau cannot accept an application
which is filed direct by the owner of the mark or his representative."
http://www.wipo.int/madrid/en/general/filing.htm
2. How much does it cost ? First registration and annual fees ?:
US$150 per class if >1 basic applic./registration.
Official internat?l applic. fee = 653 Swiss francs (?US$475)
903 Swiss francs (?US$657) for color marks
http://www.pillsburywinthrop.com/spotlight/madrid/procedures.pdf
International Fees:
http://www.wipo.int/madrid/en/fees/index.htm
3. How long time (months) does it take to register ?:
Within 2 months from the filing of an international application
the filing requirements, the USPTO must ?certify? and electronically
international application to WIPO?s International Bureau.
http://www.pillsburywinthrop.com/spotlight/madrid/procedures.pdf
4. A couple of names of agencies/bureaus/consultants who would be
specialists in doing the work ?:
There's no need to hire a consultant - the application will go through the USPTO.
-> Additional Links
Trademark Applications and Registrations Retrieval (TARR)
http://tarr.uspto.gov/
WIPO:
http://www.wipo.int/about-ip/en/trademarks.html
Guide to the International Registration of Marks Under the Madrid
Agreement and the Madrid Protocol:
http://www.wipo.int/madrid/en/guide/pdf/guide.pdf
"In order to avoid the need to register separately with each national
or regional office, WIPO administers a system of international
registration of marks. This system is governed by two treaties, the
Madrid Agreement Concerning the International Registration of Marks
and the Madrid Protocol. A person who has a link (through nationality,
domicile or establishment) with a country party to one or both of
these treaties may, on the basis of a registration or application with
the trademark office of that country, obtain an international
registration having effect in some or all of the other countries of
the Madrid Union. At present, more than 60 countries are party to one
or both of the agreements."
http://www.wipo.int/about-ip/en/about_trademarks.html#how_to_register
International Trademark Association:
http://www.inta.org/
International Intellectual Property Links:
http://strategis.ic.gc.ca/sc_mrksv/cipo/links/links_intl-e.html
I hope this will help to get you well on your way. If you have any
questions, please post a clarification request before closing/rating
my answer and I'll be happy to reply.
Thank you,
hummer
Having worked on copyright/trademark questions in the past, I was able
to search my own bookmarks to find the most appropriate links for you. |
