Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 12 months, if no objections or oppositions arise.
If I register my trademark in Mexico, do I have protection in other territories?
The entire territory of Mexico is the limitation.
Do I need to sign a Power of Attorney?
A power of attorney is not a requirement for filing an application but it is useful in cases where:
- the applicant needs to respond to any official request
- the applicant must change an attorney
- the applicant wants to withdraw the application
Are there any benefits from a pre-filing use of the trademark?
There is no benefit for using the mark before filing the application. However, in cases where two applicants filed for application at the same time and they are applying for identical marks, the applicant that can provide proof of earlier date of use will be granted the right for registration.
Will there be problems in case I don’t use my trademark after registration?
Yes. Third-parties especially business competitors may request the trademark authorities to cancel your registration on the ground of non-use.
In addition, for marks registered after August 10, 2018, the Trademark Office in Mexico requires to file a declaration of use 3 years from the registration date. Furthermore, all renewal requests must include a declaration of use.
What are the types of trademark that can be registered in Mexico?
Applicants are allowed to register marks/signs such as: words, slogans, names, colours, 3-dimensional shapes, trade dress and devices. Special requirements are applicable for each registrable mark.
What are the phases of application after a trademark has been filed in Mexico?
The application will first be examined by the trademark authorities. The trademark must meet all requirements for a registrable trademark. Compliance of all requirements will result to the mark’s registration and then details will be published for the public to see.
What type of trademark is not registrable?
Applicants are prohibited to register immoral marks, signs that contradict public order, names/flags/symbols of nations/states/international organization, generic name and non-distinguishable marks.
Does Mexico use the "Nice Classification" system?
Yes. Mexico uses the Nice Classification system. If the trademark will be used for multiple classes of goods, it is necessary to get an individual application for each class.
Is there any possibility to claim priority in Mexico?
Yes. If the applicant first filed the application in a country that is a member of the Paris Convention, that filing date can be considered as the filing date in Mexico. The application date must not exceed 6 months since the first filing.
What do I need to do to satisfy the use requirement?
You must use the trademark within 3 years from the date it was registered and, if your mark was registered after August 10, 2018, you must also file a declaration of use 3 years from the registration date.
More so, 3 consecutive years of not using the mark is also a ground for cancelled registration. To satisfy the requirements, the mark must be commercially used and the commerce or trade must happen in the jurisdiction of Mexico.
Finally, to renew your trademark registration, you must file a declaration of use along with the renewal application.
Once my trademark has been registered, for how many years will be valid?
It is valid for 10 years starting from the date of application. Note that the computation will NOT start from the date of registration.
What will be the renewal date of my trademark?
Count 10 years from the date you filed the application.
Is it legal to use my trademark even if it is not yet registered?
It is illegal to use an unregistered trademark for commerce and trade.
Does having a registered trademark in Mexico give me any right?
Mexican law mandates owners to register their trademarks in order establish their rights. The first person to file for application is entitled for registration. Ownership cannot be relied upon use since common-law rights are not available.
What is the web address of the trademark national office?
Is there any need to use my trademark before I apply for registration?
Yes. The law mandates applicants to use the trademark before applying for registration. They are required to submit a documentation of when the mark was first use. Otherwise, they have to prove that the mark is not yet in use and that they have intention to use it.
Can a Trademark Application be opposed?
Yes. Opposition was made available since September 1, 2016.
Who can contest my trademark registration?
Interested parties (contact us for more information).
Is it possible to cancel a registration?
Yes. Your registered mark is vulnerable to getting cancelled:
- if it violates propriety rights,
- if there is breach of contract,
- if mark is proven non-registrable (refer to non-registrable marks), if mark is proven to violate Article 6bis, Article 6ter and Article 6septies and Article 8 of the Paris Convention,
- if mark is misleading, deceptive, immoral, etc.
Are there any rights established by having a registered trademark?
Registration of trademark will allow the owner to enjoy some rights namely:
- Exclusive commercial use of the mark
- Oppose applications that have likeness with their mark
- Request an action to cancel applications that are identical to their mark
- Request an action to confiscate counterfeit products
- Receive damages due to infringement
- Protect their mark against infringement cases
How long is the opposition period?
Opposition cases are conducted pre-grant (started last September 1st 2016).
Is Mexico a member of the Madrid System?
Yes, Mexico is one of the signatories of the Madrid Protocol.
Do I need to present periodic statement of use?
If your mark was registered after August 10, 2018, you must file a declaration of use 3 years from the date the registration was granted. In addition, all marks must present a declaration of use when renewing the registration, 10 years from the registration date.
When should I renew my trademark?
Count 10 years from the date you renewed your mark.
What will be the renewal date of my trademark?
Count 10 years from the date you filed the application.
Is there any documentation that should be presented when renewing a trademark?
You must file a declaration of use along with the renewal application.
If my trademark expires, do I have a grace period?
When the trademark has expired, you can still renew it within 6 months starting from the expiration date.
What is a trademark?
A trademark identifies products and services in order to distinguish them in the market. The name, the verbal element, is not the only component that distinguishes a trademark; figurative elements such as logos, design, images, colors and sounds also create an identity that can be protected through trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this symbol to show that the trademark has been filed at the trademarks office and is still undergoing the registration process.
SM Some countries use this symbol to show that the service mark has been filed at the trademarks office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
There are many ways to lay claim to your work. Trademarks, patents, and copyrights offer protection for owners of intellectual property. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or a service in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea because we all have them. You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to a problem to secure a patent.
Copyright protect published, performed, or printed creative works. People who produce artistic or musical work seek to protect their “right” to stop others from “copying” what they do. Copyright protection protects any original creative works of authors including:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
A trademark, patent, or copyright are all examples of ways you protect your intellectual property. Your right to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
You recognize a registered trademark by the symbol of a circle-R following the trademark name or graphic image. Various typographic symbols show copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but a best practice is to use a circle-R or circle-C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM sign shows the brand name for an unregistered trademark classified as a product (classes 1 to 34). The owner uses this sign to mark what they believe is their brand mark.
- SM: The SM sign is identical to the TM sign except it designates a service mark (classes 35 to 45).
- ®: ®: Use the ® symbol once you register a trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to mark a copyright. The word copyright is substitute sign for Follow it with the year of the publication and owner's name. Use it whether the work has obtained copyright registration or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe are best describe your business activity.
There are 45 classes – 34 for products and 11 for services – which countries from around the world have standardized for international use under the "Nice International Classification".
These classes group all known products and services. You can register the same trademark if there are similar classes, for example, you may register the trademark KING for computers in class 23, and you can also register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is possible, then for two entities conducting business in different classes to use the identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. You can choose multiple classes under which to conduct business if you feel the protection must extend beyond only one class.
You can perform a search of your class with the following tool Trademark Class Search
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name? In the United States, under what common law, people can lay claim to a mark if they use it. It is not necessary to formally register a trademark. This fact and the sovereignty states have over the creation of chartered business entities and trade names, makes a trademark search imperative before one spends time and money registered a trademark.
Too many people use a name without knowing if they have legal coverage, and they put up big marketing campaigns with names that later they find they cannot use. Performing a Comprehensive Search Study before you decide to register your brand mark is a wise decision especially when you consider future risks of litigation.
It is a good idea to conduct a Study before you start doing business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. That company may be able to object to your use of the trademark and prohibit you from using the mark in a court of law.
What is a preliminary trademark search?
Your preliminary trademark search is an important first step before you spend time and money considering whether to apply for a potential trademark or not.
If you have trademark experience, you can use free online resources like our Trademark Searchengine, or the Trademark Electronic Search System(TESS) offered to the public by the US Patent and Trademark Office(USPTO) to search for existing marks that are identical to your planned trademark. While preliminary trademark searches are a critical part of your registration process, a successful search that show no conflicts with identical marks does not necessarily mean the Trademark Office will not reject your registration application.
if you have little or no experience dealing with trademarks, we suggest you find a professional help. Our company offers the offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list of identical and similar trademarks, and finally it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.
How do I perform a trademark search?
First, we recommend your start by defining the class you want to register. You can find your class, using our Trademark Class Search tool. Using this tool you enter your product/service, and it will tell you the class or classes you should register.
After you have found your class(es), you can go directly to your country's Trademark Office and perform the search there. You can also try our Trademark Search engines.
When searching, try different combinations of your name. For example, if you are searching for AMAZON, look for AMASON, HAMAZON, or similar word patterns. Try several different combinations of words and spellings.
Notice that several countries do not have online trademarks databases. You must go to local Trademark Office and ask for a list of trademarks.
Trademark Search may be challenging and time-consuming and, if you do not have the time or experience, our company offers the service Trademark Comprehensive Study. The Study will give you details about the classes where you might want to register your trademark, it will also include a list of identical and similar trademarks, and finally it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you find a professional help. Our company offers the offers the service Trademark Comprehensive Study. The Study will give you details about the classes where might want to register your trademark, it will also list of identical and similar trademarks, and finally it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you have some knowledge about trademark registration, you can search using our Trademark Search engine. If not, we recommend hiring a trademark attorney or trademark service like Marcaria.com to handle your trademark registration requirements, especially a trademark search because the entire process is complex and takes time.
Notice that if you do not complete the application process carefully, the registration process could be extended many months and cost far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace given the increasing number of unregistered and common law marks. Globalization of markets also raises the question of entering international markets and registration of marks in foreign countries to protect your brand and your property rights.
You need to understand that even a completed comprehensive trademark search does not guarantee acceptance and registration of your mark. A Marcaria.com Trademark Comprehensive Study includes a more extensive review process and, more significantly, a formal opinion estimating the probability of your application's acceptance.