Transcript
Page 1: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

Page 2: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

Table of Contents

Trademark Searches ................................................................................................................... 3

How to Conduct Your Own Trademark Search ..................................................................... 3

Step One: ............................................................................................................................ 3

Step Two: ............................................................................................................................ 4

Hire a Trademark Professional to Conduct Your Search ....................................................... 5

Australian Trademark Registration ............................................................................................ 5

Trademark Searches ............................................................................................................... 6

Submitting an Application ..................................................................................................... 7

Trademark Examination ......................................................................................................... 8

Trademark Registration .......................................................................................................... 8

Adverse Reports ......................................................................................................................... 8

What is an Adverse Report..................................................................................................... 9

How to Respond to an Adverse Report .................................................................................. 9

Adverse Report Time Frames .............................................................................................. 10

Taking the Headstart Path .................................................................................................... 11

What Can Quick off the Mark Trademarks do for YOU ........................................................... 12

Trademark Services .............................................................................................................. 12

The Steps to Trademark Registration ................................................................................... 12

Our Range of trade mark services include: .......................................................................... 14

Our Reach ............................................................................................................................. 14

Contact Quick off the Mark Trademarks ....................................................................... 15

Page 3: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

Trademark Searches

The definition of a trademark is a symbol, word, or series of words that identify a company, or

a product or service of that company. Before you can register your business name or company

logo for trademark protection, IP Australia must analyze your application to determine whether

your mark is eligible for registration. One of the conditions for eligibility is that your mark

must be completely unique within your market, and is not identical to or confusingly similar

with another mark. If your mark looks like another company’s mark, and if that mark identifies

the same goods and services, you will be infringing upon the rights of that trademark holder.

Infringement upon a registered trademark holder’s mark can come with legal ramifications.

Filing for trademark registration can be long: so it pays to conduct your own trademark searches

before you file your application. IP Australia, the governing body for trademark law in

Australia, has a range of search resources available to you. You should also consider seeking

the advice of a trademark professional before you file your application.

How to Conduct Your Own Trademark Search

Step One:

The first step to conducting your own trademark search is to perform a preliminary search of

IP Australia’s databases. By performing this informal search, you will unearth results of

whether or not your mark is currently being used by a registered or unregistered party. If you

attempt to register a mark that is already being used, you may be held liable for trademark

infringement, even if the other party has not formally registered their mark. By conducting a

preliminary trademark search, you can quickly reveal whether your mark is unique and unused

by other parties, and you can also avoid being sued for infringement.

You can perform a basic search through a search engine such as Google.com. This will reveal

whether your mark is widely used, but not whether your mark is eligible for registration.

Page 4: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

Let us do a Free Trademark Search - http://quickoffthemark.com.au/free-trademark-search/

You should also access IP Australia’s search tools. You can start by using the ATMOSS

database. Use this database to discover whether your proposed mark is being used for products

or services that are similar to your own: for example, you might want to register your mark as

the branding for your own line of hair products. You should search for similar marks on

shampoo bottles, hair sprays, hair oils, hair bands, and other related products.

Keep in mind that the results of your initial search cannot tell you whether or not your mark is

eligible for registration. The purpose of this initial search is to find out whether or not your

mark can be used at all.

Step Two:

Once you have conducted your initial search, you can use ATMOSS and IP Australia’s other

search tools to perform a comprehensive search of all Australian trademark databases. These

searches will allow you to see marks that are not only identical to your own, but are also similar

to it.

You can begin your comprehensive search by entering a specific search query into the

appropriate ATMOSS fields. You should search for words that are not only identical to those

included in your trademark, but also those that are similar.

The aim of this search is to identify marks in use that are similar to your own, and so could

raise infringement issues if you go ahead with your trademark application. To find these marks,

you need to be creative with your search terms. Include terms that are only a portion of your

own trademark; change the order of words within your trademark; alter the spelling and look

for synonyms; add quotation marks and search for exact phrases. Using the previous example

of hair products, you might wish to trademark Glamour Hair Care Range. In this case, you

would search for a number of different phrases: ‘glamour hair’, ‘glamour care’, ‘hair care

range’, and so on. You might also vary the spelling: ‘hare’ in place of hair, ‘glama’, ‘glammor’,

Page 5: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

or ‘glamor’ in place of glamour. You need to be thorough in your search to ensure that you

have uncovered every possible case of infringement.

Hire a Trademark Professional to Conduct Your Search

Conducting a trademark search is a complex process for those who are unfamiliar with the

process. It is easy to miss a step or use the wrong search terms, thus not uncovering the identical

or similar marks that could pose threats of infringement. When you hire a trademark

professional to conduct your search for you, you will receive a professional opinion of whether

or not your mark is eligible for registration. A trademark professional will have further access

to additional search resources, and will also be able to interpret the results of a search more

accurately.

Similarly, a trademark professional can offer you legal guidance if you should unearth a

number of similar marks to your own. You may not wish to alter your mark: in this case, you

will need the advice of an professional. You cannot navigate the legal complications of

trademark infringement alone.

You may be able to conduct an initial trademark search alone, but it is recommended that you

seek the advice of a trademark professional before you begin a comprehensive search, and

especially before you file your application. A trademark professional can draft you application

before it is filed in order to give your trademark the best chance of achieving registration, and

thus being awarded protection against infringement.

Australian Trademark Registration

A trademark is something that is used to distinguish one trader’s goods and services from those

of another. You can apply to trademark almost any intellectual property, so long as you use

this intellectual property to distinguish your goods and services.

Page 6: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

You can apply to register letters, numbers, words, phrases, sounds, smells, shapes, logos,

pictures, and even aspects of your packaging. Australian trademark registration grants you the

right to the exclusive use of your trademark. You can buy, sell, or license registered trademarks.

When you are applying for Australia trademark registration, there is a particular process that

you must follow. The first step to this process is to conduct a thorough trademark search: you

should conduct this search prior to using your brand, if possible.

Trademark Searches

Bear in mind that registering your business name, company name, or domain name does not

grant you the same rights and defences as Australian trademark registration. Registering your

name with ASIC or any other organisation does not permit you the right to use, market, or

advertise this name in commerce unless you have taken measures to ensure that this name does

not infringe upon other intellectual property.

Should you use your unregistered name in commerce, and you are found to be infringing on

the rights of another trader, you can be sued by the trademark owner.

This is why trademark searches are so important. A trademark search is designed to reveal all

of the existing marks that your trademark potentially infringes. A trademark search will

determine whether or not your mark is available for use within your particular industry.

Trademark infringement can only apply when the goods and services of both traders are of the

same category. When you are conducting a trademark search, the goods and services that are

associated with your brand must be examined for potential infringements. There are a total of

45 different classes of goods and services that you can nominate in your application, and these

nominated classes will determine the reach of your trademark protection. For instance, if you

nominate the class for ‘clothing’ on your application, you cannot take legal action against

another party using a similar mark if their products are exclusive to ‘hammers’.

Page 7: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

You can nominate more than one class in your application, and additional fees apply for each

additional class.

Trademark searches are typically complex. In order to perform a truly comprehensive search,

you must identify each and every mark that is not only confusingly similar with your own, but

also similar in a single element. You must also conduct a common law search that includes all

unlisted and unregistered trademarks within your industry.

You can instruct a trademark professional to perform the search on your behalf. At Quick of

the Mark, we offer you this service at no cost. We will perform a comprehensive search to

uncover any possible infringements in order to save you time and money before you submit

your application for Australian trademark registration. We utilize a range of search parameters

and we will interpret the results to make sense of them for you.

Submitting an Application

The next step to achieving registration is to prepare and submit your application.

In your application, you are required to identify, specifically, any goods and services that you

use in conjunction with your trademark. You must not only specify the current goods and

services, but also those that you intend to use your trademark on in the future. Bear in mind

that once your application is submitted, you cannot add or remove trademark classes. Instead,

you will have to file another application, thus wasting time and money.

Once you have lodged your application, you can begin using the ™ symbol, but you cannot yet

use the ® symbol associated with registered marks. The use of the ™ symbol will display to

other traders that your application is pending and that you intend to defend your mark against

infringement. It is a notice that you are claiming your intellectual property rights over the goods

and services that your trademark distinguishes.

Page 8: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

Trademark Examination

Once your application has submitted with IP Australia, it will undergo a period of examination.

Your application is typically examined 3-4 months after the date of filing. If your examiner has

any concerns or queries relating to your mark, you will be sent an adverse report. This adverse

report will detail reasons for which your trademark cannot be registered. You are provided with

a time limit to respond to the adverse report and to make amends to the stated issues.

Once you have rectified any issues, and if your examiner has no further concerns, your

trademark will be advertised in the Official Journal of Trademarks. Once it has been advertised,

it will undergo a 3-month period of opposition. During this time, other traders can object to the

registration of your mark on the basis of infringement or commercial disadvantage. It is unusual

to come up against opposition at this stage of the registration process.

Trademark Registration

Once the period of opposition is over and if there are no pending oppositions, you will be

required to pay your registration fee. Only once this fee has been paid have you achieved

Australian trademark registration. Once your fee has been paid, you will be issued with your

Certificate of Registration and granted with the right to exclusive use and protection of your

trademark.

You can hold your registration for a period of 10 years, and then indefinitely with the payment

of registration renewal fees. You can begin using the ® symbol to advertise your rights as a

registered trademark owner. This symbol shows other traders that you have the right to

exclusive use of your trademark for the associated goods and services, nationwide.

Adverse Reports

During the course of a trademark application, you may receive an adverse report. An adverse

report is only issued if your mark is not in order for acceptance. This report will describe the

Page 9: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

grounds for rejection, and it will often outline a number of ways to improve your mark so that

it may be successfully registered.

What is an Adverse Report

An adverse report is essentially a document that outlines the reasons that your trademark is

unsuitable for registration. The most common grounds for rejection include:

Your trademark fails to describe your products or services.

Your trademark is overly descriptive or contains words or phrases that other traders

with similar products and services are likely to use.

Your mark is identical or confusingly similar to another pre-existing mark.

Your mark consists of a generic term and so cannot be registered.

If you receive an adverse report, it does not mean that your application has automatically failed.

Instead, you are given a period of time in which to remedy the grounds for failure.

Responding to an adverse report is important. Your response must go to IP Australia, the

governing body for trademark law. If you fail to respond, your application will cease and your

mark will not be registered.

How to Respond to an Adverse Report

It is prudent to seek out the advice of a professional trademark professional when responding

to an adverse report. Your trademark professional will be able to provide you with further

information and steps for overcoming the failed grounds.

In order to overcome the grounds outlined in an adverse report, you will have to compile

affidavit and documentary evidence that proves your mark is suitable for registration. You

might include information such as:

The current and intended use of your trademark

The length of time you have used your trademark for

The ways in which your trademark is different from other marks

Page 10: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

IP Australia requires that any long or complex arguments be submitted in writing. Your

trademark professional can assist you in compiling this evidence.

Similarly, you may want to refute the grounds for rejection. Arguments against rejection are

required to be submitted in writing to IP Australia. A trademark professional can assist you in

creating an argument against the grounds for rejection.

Once you have submitted your evidence, your application will be reconsidered. However,

sometimes the additional evidence is not sufficient, and your application will still be up for

rejection. If this happens, you can elect to have the matter heard by a registrar. If this hearing

is unsuccessful to you, the only other option available to you is that you appeal the registrar’s

decision before the Australian Federal Court.

If your additional evidence is successful, your application will move on to acceptance and you

will undergo a period of opposition. If you are unopposed, your mark will be successfully

registered.

Adverse reports can be confusing, and compiling an appropriate response is a tricky task. We

can assist you in compiling your evidence and completing any necessary submissions to IP

Australia. If you require it, we can even assist you in preparing your argument to be heard by

a registrar.

Adverse Report Time Frames

If you receive an adverse report, you have a time frame of 15 months from the issue date of the

report to forward your application to acceptance. This includes the time it takes you to respond

to the report, as well as the time it takes for a team of examiners to deliberate your response. If

your response does not suffice, you may receive a second adverse report with further grounds

for improvement. Due to the lengthy, complex process, you should issue your response as

promptly as possible in order to permit yourself sufficient time to overcome the grounds for

rejection.

Page 11: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

Should your application cease due to a lack of response sometime during this 15 month period,

you are able to apply for an extension: if you are successful, your trademark application will

be reinstated. Prompt response is the best option: there are fees that go along with time

extensions.

Once your trademark registration application has been lodged, IP Australia will examine your

application to determine whether or not your trademark is registerable. The registrability of

your mark is determined by a number of requirements outlined in the Trademarks Act Australia

1995. A trademark professional can help you file your application in accordance to these

requirements.

Taking the Headstart Path

We recommend that you undergo the Headstart procedure when you are applying to register

your trademark. This process can be more economical and efficient that carrying out a

trademark search and filing a subsequent trademark application. You can avoid the costs

associated with trademark searches if your take the Headstart path.

The Headstart procedure involves two separate stages. During the first stage, we file a draft

application for your trademark registration. Within five business days, an examiner will contact

us with an initial impression of whether your mark is suitable for registration.

Part one of the Headstart procedure involves a drop-down list, and so we cannot be specific in

describing the connection between trademark and products or services. Once we commence

part two of the procedure, however, we can request to make an amendment to the application.

This amendment can be made providing that the changes do not include a description that is

not included within the scope of the drop down list. We can include non-specific terms that are

specified at a later stage in the application.

If you receive a negative response, you can choose to drop your application, or you can decide

to refute the matter by producing evidence of your use of trademark. This evidence must

include the extent of your use of your mark, including the length and manner of use.

Page 12: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

Application examiners reserve the right to issue adverse reports even if your Headstart

application has received a positive response. Keep in mind, too, that there are some trademarks

that cannot be used in the Headstart procedure. These include:

Special types of signs and non-traditional trademarks, such as colours, shapes, scents,

and sounds;

Defensive, certification, or collective marks;

A series of trademarks;

Divisional applications.

What Can Quick off the Mark Trademarks do for YOU

Trademark Services

Providing 'start to finish' trademark services - searches, applications and registrations as well

as providing assistance in connection with infringement matters, opposition matters and more.

We provide Australian trademark registration services and can also assist with International

Trademark registration. We provide advice in connection with adverse report matters,

infringement matters, opposition matters and more.

1. Conducting infringement identification searches before lodging trademark applications.

2. Preparing and lodging Australian and international trademark applications.

3. Preparing and lodging submissions to overcome IP Australia rejections.

4. Monitoring for unauthorised copying.

The Steps to Trademark Registration

STEP 1: INFRINGEMENT SEARCHES (2 weeks): Don't infringe another person's trademark

rights. Will the 6-7 month Government process register your trademark?

STEP 2: TM APPLICATION (1-2 days): We will review your business, draft a trademark

portfolio to minimise your risk & lodge the application.

STEP 3: TRADEMARK OFFICE examination: No fee if no objection or oppositions.

STEP 4: 10 YEARS REGISTRATION (in 6-7 months): We handle the registration paperwork,

ensure deadlines are met, and pay the 10 year registration fee.

Free Trademark Searches Click here to order your search

Page 13: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

Australian Trademark Registration, from start to finish – Click Here to read the full process in

detail

International Trademark Registration, via associates or through the Madrid Protocol – Click

here to learn more

1. Trademark Infringement Advice

2. Trademark opposition assistance & advice

3. Trademark Licensing Advice & Agreements

4. Assignment of Trademark Ownership

5. Comprehensive Trademark Searches

6. Preparation & Filing of Applications

7. Opposition & Non-use Matters

8. Finalising registration, obtaining & issuing of certificates

You use branding to stand out from your competitors and make sure your customers recognise

your business over your competitors.

Properly registered trademarks are important to protect your unique brand, and to make sure

your competitors don't get a free ride on the back of your hard work marketing your business.

You can trademark words, logos, shapes, colours, scents, images or packaging – all of those

things that uniquely identify your business and products.

Searching to see if your chosen trademark is already taken by someone else or providing an

opinion on whether the trade mark is likely to be allowed by the trade marks office – a part of

IP Australia;

Filing an application to register a trade mark with the Australian Trade Marks Office and in

Trademark Offices around the world, including filing an International Trade Mark Application

under the Madrid Protocol, or by use of the Paris Convention for the Protection of Industrial

Property

Prosecuting your trademark application through to grant, which includes advising on responses

to Office Actions by Trademark Examiners (also called examiner's reports) and filing the

response in the best way to overcome the objection raised by the examiner

Running an opposition against the grant of a trademark registration or defending an opposition

filed by someone else against the registration of your application

Page 14: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

Providing infringement or freedom to operate advice. This may be to a trademark holder

wishing to enforce the trademark registration rights against an infringer or it may be to a

business wishing to avoid infringing the rights of a trademark registration owner

Attending to annuities (that is payment of renewal fees) along with monitoring for the annuity

dates

IP Wealth provides comprehensive national and international trade mark protection services.

We specialise in establishing and maintaining registered trade mark rights, and our team of

Registered Trade Marks Professionals and experienced consultants will work with you to

develop strategic trade mark protection solutions for your business.

Our Range of trade mark services include:

1. Providing trade mark registrability advice

2. Conducting trade mark searches to determine the availability of trade marks in Australia

and New Zealand

3. Conducting trade mark searches to determine the availability of trademarks overseas

4. Preparing, filing and managing trade mark applications in Australia and New Zealand

5. Preparing, filing and managing Madrid Protocol trade mark applications

6. Facilitating the preparation, direct filing and management of international trade mark

applications

7. Responding to Trade Mark Examiner’s Reports (where your trade mark is rejected by

the Examiner)

8. Prosecution of trade mark opposition proceedings for both applicants and opponents

9. Negotiation and settlement of trade mark oppositions and disputes

10. Researching and providing advice on the validity of trade marks for non-use purposes

11. Management of Australian and international trade mark portfolios

12. Facilitating the renewal and maintenance of trade marks

13. Trade mark infringement and competitor monitoring

Our Reach

In addition to our direct handling of trade marks in Australia and New Zealand, we can file and

manage international trade mark applications via our network of international associates, or via

the Madrid Protocol. Filing via local associates not only allows us to meet the requirements of

filing internationally, but it also enables us to utilise our associate’s knowledge of their national

trade mark laws and systems.

Trademarks are used to claim exclusive properties of products or services. The usage of

trademarks by its owner can cause legal issues if this usage makes him guilty of false

advertising or if the trademark is offensive.

Page 15: Free trademark e book

Address: PO Box 1295, Maleny, QLD 4552

www.quickoffthemark.com.au - Email: [email protected]

Free Phone: 1800 35 25 75 - Direct Phone: +61 7 31023775

Trademarks can be owned, but also licensed. Many toy suppliers are licensees. The

unauthorized usage of trademarks by producing and trading counterfeit consumer goods is

known as brand piracy.

The owner of a trademark may pursue legal action against trademark infringement. Most

countries require formal registration of a trademark as a precondition for pursuing this type of

action. The United States, Canada and other countries also recognize common law trademark

rights, which means action can be taken to protect an unregistered trademark if it is in use. Still

common law trademarks offer the holder in general less legal protection than registered

trademarks.

A trademark may be designated by the following symbols:

™ (the "trademark symbol", which is the letters "TM", for an unregistered trademark,

a mark used to promote or brand goods)

® (the letter "R" surrounded by a circle, for a registered trademark)

A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination

of these elements. There is also a range of non-conventional trademarks comprising marks

which do not fall into these standard categories, such as those based on color, smell, or sound

(like jingles).

The term trademark is also used informally to refer to any distinguishing attribute by which an

individual is readily identified, such as the well-known characteristics of celebrities. When a

trademark is used in relation to services rather than products.

Contact Quick off the Mark Trademarks

FREE Phone: 1800 35 25 75

Direct Phone: +61 7 31023775

Email: [email protected]

Skype: quickoffthemark

Mail: PO Box 1295, Maleny, QLD 4552

The details and views provided here are opinion only and may not be appropriate in your

personal circumstances. It is highly recommended that you seek independent professional

advice or contact us for assistance regarding your individual circumstances.


Top Related