Diy trademark registration – 7 Steps So You Can Trademark!

Can I file trademark myself?

If you are a beginner at DIY trademark filings, it must not be easy to take up many new concepts at one time. When DIY my new bookshelf (We Understand Your Needs because we also DIY), I shared the same sentiment – it is especially hard to take the first bold real step. Swamped by information could be a blessing and a curse, getting you nowhere for your trademark self-application.

Before DIY your trademark

What are the benefits of trademark registration? Let’s visit Yeti’s “FLOWERFUL” business (Wake Up Call for Shareholders!) Apply for a trademark filing is indeed an integral part of your business, something that you cannot take it lightly. While seeking advice from local counsels would always be recommended, equipping yourself with basic knowledge certainly facilitates the decision-making process – DIY trademark is all about how to marry your DIY trademark filing strategies with commercial activities in a meaningful manner. After all, you are the one, and the only one, who understands your business the best. Before you embark on your DIY trademark research, we have therefore prepared you a list of 20 practical tips, before you consider filing a trademark! (New to Trademark).

Let’s start our Trademark Self-Application!

We vow to stay with you for the whole trademark journey. After reading this article, hopefully, you will have a clear picture of the basic procedures of trademark filing and how to file a trademark self-application.

1. Trademark Filing

Can I file my own trademark application? Like visa or loan applications, trademark filing applies for a trademark is could be as “simple” as the collection of basic information and documents. You should get ready the trademark image, the name and address of the applicant’s name, and the specifications (i.e. the goods and services to be protected under your trademark self-application). Some registries will also request a copy of the certificate of incorporation/identity card to make sure that the name of the applicant is identifiable. Some others may even be more cautious and require a power of attorney (“POA”) to show that you have formally instructed an agent to file a trademark application to apply for a trademark. The strictest registries will request that the POA be notarized or even legalized. As such, the execution of the POA will be witnessed by recognized third parties so that the authenticity of the POA can hardly be challenged. Please be mindful, however, that legalization in some jurisdictions could be costly (more than US$1,000).

2. Deficiency Checking

The filed application form is the first and foremost step of a trademark self-application, but it could hardly be flawless, especially it is your first DIY trademark filing if you are a beginner. For example, if you are in partnership with a friend (as opposed to forming a company), the descriptions of applicants could be tricky. You may carelessly file a duplicated item or an item with a typo in the specifications. Sometimes, the registries may also consider that a filed item requires modification or be transferred to another class. Luckily, most registries will check and raise questions against your filed application form, and you will be given chance to remedy the deficiencies so that your trademark self-application fully conforms to the local procedural rules.

3. Substantive Examination

Substantive Examination will typically follow. However, in some jurisdictions like Macau and Brazil, the application for trademark will first mature into publication before any substantive examination. While this reduces the workload of the registries, it will give a harder life for potential opponents because some of the opposed marks should not have been allowed for publication after the substantive examination. There are two major grounds that your application will be refused registration. Please visit Refusal on Absolute Grounds and Refusal on Relative Grounds. Perhaps this would be the first time you questioned yourself “Can I file trademark myself?” when encountering an official objection. Please also note that in Europe, the relative grounds objections are not raised by the registry. The onus is therefore on the earlier right owner to be vigilant against new applications for trade mark filings and to earlier rights and to oppose conflicting marks when necessary.

4. Publication

If the registry considers that your mark is inherently registrable (i.e. sufficiently distinctive and not descriptive), and not similar to an earlier trademark, then the registry will publish your trademark in a governmental journal or gazette for a certain period (usually 3 months). It is interesting to note that you are required to publish a cautionary notice in local papers in East Timor instead. During the publication, your DIY trademark may be opposed by a third party or interested party if your trade mark is considered similar to their trademark(s) or not acceptable as trademark registration for certain reasons. The publication should be music to your ear, as typically you are now only one step from completing your DIY trademark registration.

5. Opposition

Opposition is the first official aggressive step that could be taken by the earlier right owner. Of course, there is nothing to bar you from writing to the trademark applicant requesting a voluntary withdrawal of an application any time before the opposition. The opposition could mature into various manners within one single jurisdiction, not to mention that there are different rules and practices governing opposition variably across the world. This is one major risk for trademark self-application. We do not recommend that you take on the opposition proceedings without professional assistance. Anyway, please enjoy our general tips (Our Three Tips for Opposition!).

6. Registration

If you do not receive any opposition during the publication period, you will get your trademark successfully registered. One notable exception is the United States where you may need to take a further step to file a statement of use to demonstrate your intention to use the applied-for items before allowed registration. In practice, many registries nowadays are environment-friendly and no longer issue paper trademark certificates unless requested and subject to payment of a small fee. In any event, the Registry will only issue the certificate once in a lifetime so please keep your trademark certificate in safe custody. A simple confirmation of your postal address before sending the certificate divides the good agents from bad. Trademark registrations typically last for ten years in most jurisdictions, but a further question is when the clock starts kicking – some from the application date while others from the date of registration. Please keep a diary on the renewal dates even if you have engaged an agent. More importantly, always use your registered marks in your business!

7. Cancellation / Invalidation / Revocation

Trademark Registration should never be the end of your trademark journey. If you do not use your trademark for a considerable time after DIY trademark registration, it is somewhat a waste of social resources, just like you occupy a certain range of frequency for radio broadcasting but end up without a single radio program. A registered trademark is typically said to be “vulnerable” to non-use cancellation after 3 years (subject to exceptions such as 5 years in Europe) from the date of registration. In other jurisdictions such as the Philippines and the United States, you may even be requested to file a statutory of use to maintain your trademark registrations. Non-use revocation is only one kind. There are other reasons why a third party could kick out your registered marks, such as your DIY trademark registration was filed in bad faith in the first place. Again, as opposition, cancellation proceedings are complex yet crucial to your trademark registration, so please always seek professional assistance.