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Benelux trademark protects Belgium, Netherlands and Luxemburg. In order to obtain trademark protection in Benelux you can register your trademark in two ways: First option is that you request registration in the entire European Union with one single application; this can be done via the European Union Trademark which grants trademark protection in the 28 country members of the EU (more info here). Second option is that you register directly your trademark in Benelux. If you want to proceed this way please follow the steps described belows.
Step 1 - Trademark Study
Before filing your trademark in the United States, you must evaluate any issues that may arise during the registration process. Our Comprehensive Study not only lists similar trademarks (graphic and phonetic) that may conflict with yours but also provides you with an Attorney's opinion on the trademark registration possibilities and the class(es) that your goods/services belong to.
Graphic and phonetic similarity trademark search report
Trademark attorney's analysis and advice
Trademark class recommendation
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Step 2 - Trademark Application
Specialized attorneys will file your trademark application in the United States and carry out all the necessary formalities to bring your application for approval and registration. As soon as your trademark is filed, we will send you a filing report that will include the application number and application date. Also, we will send you a scanned copy of the filed application.
Process handled by experienced trademark attorneys
Filing report and a scanned copy of the application
Online tracking of the registration process
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Step 3 - Trademark Certificate
Once your trademark application is approved, our attorneys complete all the formalities necessary to obtain the registration certificate in the United States. After the certificate is issued, it is forwarded to your address along with a registration report specifying the registration number, registration date, and any special consideration that should be taken into account in the United States.
Process handled by experienced trademark attorneys
Registration report and delivery of the registration certificate
Monitoring and notification of important dates
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**If you know your registration possibilities, you can proceed directly with service: Step 2 - Trademark Application
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 Frequently Asked Questions
Trademark Registration
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How many applications should I file?

The answer to this question depends on the characteristics of your mark, your budget and the scope of protection that you would like to have in the United States.

If your trademark contains distinctive verbal elements (text) as well as design elements (graphics or logos) and you wish both to be protected, our recommendation is to file two trademark applications; one to protect just the verbal elements (the application will be filed as “Word Mark”) and another to protect just the design elements (the application will be filed as “Combined Mark”).

In this case, proceeding with two trademark applications has the following advantages:

  1. Broader and stronger protection. If a third party files a “Combined Mark” with very similar text to yours but different design, their “Combined Mark” could be accepted for registration if you only filed a “Combined Mark” and not a “Word Mark,” because in its entirety the third party’s mark is still considered different from yours.
  2. You will be protected if your logo evolves. It is common for companies to change the design of their logo with time. If you file a “Combined Mark” and not a “Word Mark,” your new logo will not be protected. You must use your trademark exactly as registered; if you don’t, your trademark may be subject to cancellation.
  3. Effective verbal and graphics protection. Filing a “Word Mark” application provides greater flexibility to use your mark in different ways, whether it is presenting it in stylized text or presenting it with different designs (as long as they are not too similar to registered trademarks that belong to third parties). At the same time, filing a “Combined Mark” allows you to protect the design elements of your mark.

If your trademark also contains a slogan or a distinctive design symbol, we suggest you file a specific application for each, as this will give you additional protection.

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Is it possible to claim priority in United States?

Yes. If the first application was filed in a country that is a member of the Paris Convention, and it was filed within 6 months from the US filing date, it is possible to claim priority.

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What do I need to do to satisfy the use requirement?

Use your trademark within 3 years from the date it was officially registered. It is mandatory to engage the mark on trade or commercial transactions and it must occur within the jurisdiction of the United States.

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How do I submit a Statement or Declaration of Use?

Once your trademark filed as "Intent-to-Use" becomes accepted, we notify you that it is now time to file a Specimen of Use.  At this point, we typically request the "specimen" which would be an image showing your trademark in use.  This Specimen can be a website, label, brochure, screenshot, etc.  Our attorneys will verify whether they believe the Specimen of Use is sufficient and will provide feedback.  

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Are there any benefits from using a trademark before registering it?

Yes. Using unregistered marks for goods/services is approved by the law. In U.S., the first to use a mark or the first to file for registration, whichever is earlier, is the authorized and legal owner of the trademark. More so, common law rights are acquired through use of a mark. Notice thought that some products that are related to cigarettes and drugs are regulated before they are made available in the market.

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What is the time frame for the trademark registration approval?

The average time frame for the trademark registration approval in the U.S. is 10 months, if no objections or oppositions arise.

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Do I need a Power of Attorney?

No, you don't need to provide a Power of Attorney for registering your trademark in United States. 

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What is a "Filing Basis"?

When filing a trademark application in the United States, a “Filing Basis” must be selected. You can select from four possible options:

1. “Use in Commerce” basis

If you are currently using your trademark in the United States, we will file your application on a “Use in Commerce” basis.

In this case, you will need to provide the date of first use and also send proof that the mark is being used in the United States. Acceptable proof of use (also called “specimens of use”) might be: a page from a website, an advertisement, a brochure or a pamphlet that describes the product/service and shows the trademark. Labels, tags or packaging are also considered acceptable proof of use for a trademark.

2. “Intent to Use” basis

If you are not using your trademark in the United States, we can still file your application on an “Intent to Use” basis. In this case, your application will be processed normally, but once it is accepted for registration (approximately 10 months after the filing date), you will be required to show proof that the trademark is being used. In order to do this, we will file a “Statement of Use,” in which we present the proof of use to the Trademark Office. This will be considered as a separate service.

Note: If you are not able to provide the proof of use by the deadline, you can request an extension every six months (for up to 3 years from the acceptance notification).  

3. “Foreign Registration” basis

If your trademark is registered in another country, we can file your application on a “Foreign Registration” basis. In this case, no proof of use is required for the registration to be granted.

For this kind of application, you will be required to send a scanned copy of the foreign Registration Certificate, along with a translation signed by the translator.

4. “Foreign Application” basis

If your trademark has been filed in another country in the last six months, we can file your application on a “Foreign Application” basis. In this case, additional information will be needed once the trademark is accepted for registration. You will need to provide either the foreign Registration Certificate of the trademark or proof of use in the United States.

For all of these cases, a Declaration of Use must be submitted between 5 and 6 years from the registration date.

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When is it required to inform the translation and transliteration of a trademark in the USA?

An application to register a mark that comprises non-English wording must include an English translation of that wording. This requirement also applies to trademarks comprised of two or more distinct words that are represented as one word, in which one or more of the words in the mark appears to be non-English wording that would clearly be perceived as a distinct word(s) within the compound. A satisfactory translation must be some normal English expression that will be the equivalent in meaning of the term in the other language. For example, the English equivalent of the phrase "mais oui" in French is "why, certainly," or "why, of course,", and not the literal translation "but yes."

If the trademark also includes non-Latin characters, a transliteration of those characters must be included along with the translation. A transliteration is the phonetic spelling, in corresponding Latin characters, of the word(s) in the mark that are in non-Latin characters. For example, the transliteration of the Chinese character “文” is “Wen” and it means “culture, writing” in English.

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When filing a logo or combined mark application in the USA, should I claim color?

The following factors must be taken into consideration when deciding whether or not to claim color in a logo application: the scope of protection you desire and the importance of the specific color(s) in terms of the image of your brand.

If no color claim is made, your logo is submitted in black and white and it is presumed to cover all colors. The benefits of not claiming color include a greater scope of protection of the shape of your mark and the flexibility of being able to use your logo in different color schemes, while still maintaining the protection. This option is advisable if the specific color(s) of your logo is not vital for the brand image.

On the other hand, if the colors of your logo are fundamental, and your customers recognize your brand because you use particular colors, it may be more suitable to claim the colors of your logo as a feature of the mark.  Claiming color implies a more limited scope of protection to the specific colors you claim, but it entails a higher degree of protection over the color itself (similar marks have a lower probability of co-existing if they are in the same colors). If you choose to claim color, your application must describe where each color appears in the mark.  Black, white, or gray can be used as claimed features of the mark or to indicate areas that are not part of the mark, such as background, transparent areas, shading, etc.

For ideal protection, as some big companies do, it would be advisable to file two applications: one black and white logo without claiming color to better protect the shape of your mark, and one-color logo with a color claim to assure protection of the mark with the particular colors you use.

 

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What are the requirements for an acceptable specimen or proof of use?

A specimen or proof of use is a sample of your trademark as used in commerce. It is real-life evidence of how you are actually using your trademark in the marketplace, with the goods or services included in its description.

The USPTO requirements for proofs of use are:

  • Be a real example of how you use your trademark in commerce in providing your goods or services (not a mock up, printer’s proof, digitally altered image, rendering of intended packaging, or draft of a website that shows how your mark might appear).
  • Show your trademark used with the goods or services listed in your application.
  • Depict the same trademark as shown on your drawing.
  • Show your use of your trademark (not use by someone else, such as press releases sent exclusively to news media).
  • Be an appropriate type of specimen based on whether you have goods or services. For example, advertising material is an acceptable specimen for services, but not for goods.
  • Show your trademark used in a way that directly associates the mark with the goods or services.
  • Show your trademark used in a way that consumers would perceive it as a source indicator for the good or services in your application (it functions as a trademark).
  • Include the URL and date you accessed or printed the webpage in your submission.

Some proof of use examples for goods are a photograph, scanned copy, screen capture, or printout of:

  • The goods themselves, showing your mark.
  • Labels and tags for the goods, showing the mark, with informational matter that typically appears on a label in use in commerce for those types of goods, such as net weight, volume, UPC bar codes, lists of contents or ingredients, or other information that is not part of the mark but provides information about the goods.
  • Packaging for the goods, showing the mark.
  • Sales displays where the goods are sold, showing the mark.
  • Webpages selling the goods, showing the mark on or in close proximity to the goods, the price, and a shopping-cart button. In your screenshot or printout, you must include the URL and date you accessed or printed the webpage.
  • For software as goods, a screenshot of the software launch screen showing the mark or a screenshot of a webpage with enough information to download the software and the mark appearing in the title bar.

Some proof of use examples for services are:

  • Online advertising or printed matter showing a direct link association between your trademark and the services.
  • Television and radio commercials for the services.
  • Marketing material showing a direct association between your trademark and the services (brochures or leaflets advertising your service).
  • Signage where the services are rendered.
  • Material used in the providing/rendering of the services.
  • Invoices showing a direct association between your trademark and the services.
  • Business cards and letterhead showing a direct association between your trademark and the services.

To see images of some of these examples of acceptable proofs of use, visit the USPTO’s webpage “Specimens”.

It is important to review  the requirements and examples since the USPTO is becoming stricter when it comes to the proofs of use. 

Examiners may visit the websites from which the specimens have been obtained to verify that goods and services are real and currently available to the American consumer.

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If I register my trademark in United States, do I have protection in other territories?

Registered trademarks in the United States are protected in its entire geographical scope including territories such as Puerto Rico, Virgin Islands, Northern Mariana Islands, Guam and American Samoa.

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What are the phases of application after a trademark has been filed in United States?

The application will be examined if it is compliant with the filing requirements. Before the application is submitted, it would be best to study first if the mark accomplishes all requirements with regards to clarity, formality, distinctiveness, or any conflict. This will prevent you from being rejected. Once the examination is done, the application details will be published online and third-parties will have a chance to oppose. After this stage, the registration will be granted.

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Are there any rights established by having a registered trademark?

Yes. When you register a trademark in the United States, you will establish these rights: 

  • Use the trademark exclusively
  • Sue third parties for infringing the registered mark
  • Request for confiscation of fake goods
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Once my trademark has been registered, for how many years will be valid?

The trademark will be valid for 10 years starting on the date of initial registration.

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What is a Statement of Incontestability?

A Statement of Incontestability is one filed by the owner of a mark registered on the Principal Register.  The statement serves as evidence that the mark and/or its registration is valid and that the trademark owner reserves the exclusive right to use the mark on goods and services.  In order for a trademark to meet the requirements of being considered “incontestable,” it must have been used in commerce continuously for at least five years after the registration and must still be in use at the time the Statement of Incontestability is filed.

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How long is the opposition period?

It will start on the date the application details are published online and will end 30 days after that date. Extensions are possible to be granted.

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Is it possible to cancel a registration?

A petition to cancel a registered mark is possible if these violations are present: 

  • The owner filed the application in bad faith
  • The mark is proven to be immoral or in conflict with public policy
  • The mark is deceiving the consumers
  • The mark is describing the characteristics of the good/service
  • The mark is generic and/or functional
  • The mark is not capable of making the good/service distinct
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My Trademark was Cancelled, what can I do?

There are multiple ways to cancel a trademark and subsequently, there are multiple options to exercise once a trademark has been cancelled:

  • If a trademark is cancelled because an owner failed to submit scheduled maintenance documentation and accompanying fees for an existing mark, the owner may not later request that the mark is reinstated. The owner must file a new trademark application. 
  • If a trademark owner can prove that a trademark cancellation is the result of an error on the part of the Trademark Office, the owner can ask to have a mark reinstated or file a petition with the Director of the Trademark Office.  Such an error would include failure on the part of the USPTO to make appropriate changes after receiving written notice of an address change.
  • If a trademark cancellation is the result of a third party petition to cancel an existing registration of a mark, the trademark owner can contest the petition and request that the mark is reinstated. 
  • If a trademark owner submits the appropriate documentation and a trademark is cancelled because such documentation is not received in the Trademark Office, the owner can ask to have the trademark reinstated if the owner is able to provide proof that the documentation was sent and the error lies either with the letter courier or the USPTO.
 
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My Trademark was Abandoned, how can I revive it?

An abandoned trademark application is one that has gone from pending to inactive status due to a failure to either respond to Office action, a failure to file a Statement of Use in a timely manner, or for an incomplete response.  While your application is pending, an examining attorney will send an Office action letter that will require you to issue a response within six months from the mailing date on the letter.  If you do not respond within that six month time frame, your application will be deemed abandoned and you can submit a Petition to Revive your trademark application if the failure to respond was unintentional.  If the Abandonment is the result of a failure to file a Statement of Use, the owner can file a Petition to Revive the application along with a petition fee if the failure to submit documentation was unintentional. In the case of submitting an incomplete response to an examining attorney’s Office action, the trademark owner can file a petition if the Petitioner can demonstrate that the examining attorney is in error for holding the application abandoned.

Basic Concepts
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What is a trademark?

A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by 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 trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.

SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.

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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 best describe your business activity. 

Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.

These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics. 

Trademark protection only extends to commercial use within your specified classes.  It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.

You can search for your trademark class with this Trademark Class Search tool.

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Do I have to specify the products and services?

Yes, you have. It is not possible to register trademarks that are too descriptive or generic. For example, you cannot register the term 'CAR' for automobiles. You also cannot register a trademark that is like other marks. For example, you cannot register a trademark like HAMASON as an online bookstore because it resembles the Amazon brand name.  

If you are unaware of which class or classes best protect your goods and services, we recommend you order the Trademark Study. Our experienced attorneys will review your product or service description and match it to the class or classes most for your business activity. 

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What is a priority claim and when can I use it?

A priority claim is an allowance based on Article 4 of the Paris Convention for the Protection of Industrial Property. It enables you as the owner of a filed trademark to file subsequent trademark applications in any of the Convention’s signatory countries using the effective date of your first application as long as you file the subsequent applications within six months of your original trademark application.  That means if you apply for a trademark in Canada, five months later, you can apply for a trademark in France using the effective date of your Canadian application.

We strongly recommend that you submit your additional applications as soon as possible after your base application.  Many countries have strict requirements regarding the type of documentation required in order to claim priority (sometimes including legalization and translation of the original application). 

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What happens if oppositions or objections arise during the registration process?

The purpose of the Trademark Study is to assess the probabilities of objections and oppositions. If objections or oppositions arise, Nominus.com relies on experienced Trademark Attorneys that will guide you in the appropriate course of action.

Upon notification of an office action or opposition, we strive to:

  • Communicate the details of the action to you as quickly as possible.
  • Include future steps and possible arguments.
  • Monitor deadlines and explain the costs to prepare and submit a response, if applicable.
     
Trademark Search
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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? 

Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a trademark search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.  

It is a good idea to carry out some research before starting to do 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.  The other company may object to you using the trademark and legally prohibit you from doing so.

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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 our free trademark search engine, or others like the TMView trademark search engine, 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 shows 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 professional help. Our company offers the service Trademark Study. The Study will give you details about the classes where might want to register your trademark, it will also list identical and similar trademarks, and finally, it will provide you an Attorney's recommendation about registration possibilities and use of your trademark.

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Where can I perform a trademark search?

If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time-consuming.

Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing 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 trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.

Please note that even a complete trademark search does not necessarily guarantee your trademark will be accepted and registered. A  Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.

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