What can you expect after the trademark registration has been filed with the corresponding intellectual property office (IPO)? There are four main stages of the evaluation process, the length of which varies considerably across different countries. For a more detailed overview of the waiting periods for trademark registration, please read our article - How long does it take to register a trademark?
Stage 1: IPO’s assessment of formal requirements
Formal requirements, such as name, address and representative are double-checked by the IPO and returned to the representative for correction if any gaps are identified
This stage of assessment also focuses on the evaluation whether the goods and services defined on the application are accepted terms
Stage 2: IPO’s evaluation of distinctiveness
Distinctiveness of the trademark to be registered is evaluated by the IPO, and office actions are raised against applications for trademarks that fail to display sufficient distinctiveness (i.e. contain only descriptive or generic words)
Numerous IPOs also examine whether identical trademarks have been registered in the same categories of products and services. The practice of IPOs however varies in this regard across different countries. While the USPTO in the US raises an office action against trademark applications for which identical or closely similar trademarks have been already registered, this level of evaluation is more relaxed in the UK and the EU where the owners of previously registered trademarks are merely notified.
Stage 3: Trademark published for oppositions
Once the trademark applications passes through the IPO’s assessment and evaluation, it is published for oppositions
During this period, owners of previously registered trademarks (as well as other entrepreneurs) have the right to raise oppositions that could impede the registration process
This process typically takes the form of sending a letter of “threatened opposition” first to the representative of the new applicant, clarifying the issue and asking for an amicable resolution
On average, oppositions are raised in only about 5% of new trademark applications
If an opposition is raised, the new applicant can decide whether they wish to resolve the opposition (either amicably or via a legal proceeding) or abandon the application (losing full amount of fees paid to the IPO)
Stage 4: Successful registration
If no oppositions are raised, or all of them are successfully resolved, the trademark is published in the registry and its validity is backdated to the date of initially filing the application