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FAQ

Is my trademark registration a guaranteed success?

There is always a degree of uncertainty in trademark registration. Often, national trademark office databases do not include the most recently filed trademarks as they are only updated so often. As a result, the trademark in question may already exist as a file in progress. In addition, some countries such as the United States adopt the common law in trademark registration. There may be cases where a trademark is not registered, but already been in use. In these cases, the first party to use the trademark will have trademark rights. These reasons may lead to failure of the trademark application. However, we share the risk with our customers, and are the only company to offer a guaranteed, 50% refund service level.

How long does the registration process take?

Under normal circumstances, the trademark office will issue an acknowledgment of the trademark filing within a month. Our express service can guarantee protection of your mark by expediting the application to get a filing number within 3 business days. After that, the final trademark registration certificate will usually be issued in 8-24 months, depending on the country of registration and the complication of the case.

What is the cost to conduct a comprehensive search for my trademark?

Witmart is the only company that offers a comprehensive search done by a professional trademark consultant free of charge.

Who can apply for trademarks?

Any individual or company can apply for trademarks in the US, Canada, or EU, regardless of their country of origin or operation.

What is a TM?

TM is the short form for TRADEMARK, regardless of whether a trademark has been registered with any Intellectual Property office for registration; anyone can put TM to declare the trademark rights, but only registered owners can assert their rights in courts. Generally, in the upper right or lower right corner of the trademark.

What is ®?

® is the short form for REGISTERED, meaning it has been registered with an Intellectual Property Office. The owner of a registered trademark has the right to exclusive use of a mark which can be asserted in courts. You can identify a registered trademark on goods, packages, manuals, or other appendages. It is usually marked in the upper right or lower right corner of the trademark. It should be noted that the United States and some EU countries have strict limits on the use of ®; in some jurisdictions, it is a criminal offense to use the ® without a registration certificate.

What happens after your application is processed?

a. Our professional team will exam the possibility of registering the trademark. As a result of this in-house review, we will recommend to you how you can modify your application if it needs to be changed at all. b. We will ask you for any required documents and resources to present you with a filing plan. c. Once you approve the filing plan, our specialist will submit the prepared document to the Trademark Office in the country of application. d. Once Witmart receives the acknowledgement of filing; we will notify you immediately and send you the correspondence by email.

What are the different kinds of trademarks?

There are 3 kinds of trademarks that you can apply for: the word trademark, the figurative trademark, and figurative marks with letters. A word mark is represented using words, letters, numbers or any other characters that can be typed. A figurative mark is represented using pictures, graphics or images. A figurative mark containing letters is a specific combination of pictures, graphics or images with words or letters. Figurative trademarks are also sometimes called design trademarks. -For word marks, the font of the trademark can be changed when used; -For figurative marks, the image cannot be altered when used; -For figurative marks containing letters, the combination cannot be changed, otherwise it will not be protected by the Trademark Law.

What is Trademark Statement of Use?

In many countries such as the US and Canada, there are two scenarios when applying for a trademark: Either the trademark is already in use in the designated country; or it has never been used. The US and Canada Trademark Offices only issue the registration certificate after the trademark applicant had provided a Statement of Use. In the case that the trademark has not yet been used, the application may be filed with the bona fide intention to use the trademark to offer goods and/or services in the designated country. However, the statement of use will still need to be submitted before the registration certificate can be issued.

Can trademarks be registered internationally? What is the Madrid International Trademark System?

Currently the only way to register a trademark internationally is through the Madrid System (officially the Madrid System for the International Registration of Marks). This system facilitates the registration of trademarks in multiple jurisdictions around the world. The Madrid System currently includes the world's 92 major trading nations, and the operation of the entire system is managed by the World Intellectual Property Organization (WIPO). Although the Madrid System is convenient for centralized management of multiple trademark countries, it is very costly. After submitting an application to the WIPO, the customer needs to submit applications and fees to each country separately. Furthermore, should there be any problems with one country in your Madrid application, the entire application for all countries will fail, which can be costly. Finally, the applicant also needs to apply individually in each country before using the Madrid System to administer those applications centrally, so the risk is substantial and is not recommended for small to medium enterprises looking to expand. For small to medium enterprises, we strongly suggest applicants apply for trademarks in the US, EU and other major markets separately. This means you save time and money for trademark protection.

What are the ideal colors for a “design mark” application?

Generally, a trademark is submitted in black and white. The colors of the trademark can be changed freely after it is successfully registered. However, if the trademark is applied in certain colors other than black and white, the trademark must use the exact colors as approved. Therefore, we suggest that our customers apply for trademarks in black and white.

Can we change the font of the letters after the “design mark” is registered?

Usually, it is acceptable if the change of the font is insignificant (such as changes from italic to standard, Arial to Calibri). If the changes are significant, we suggest that customers reapply.

My trademark contains both images and words. Should I register them separately, or together?

Our recommendation is to register the word and logo trademark separately. This creates flexibility on the usage of the trademark as well as reduces the overall risk of denial.

What is Nice Classification?

The Nice Classification is a system of classifying goods and services for the purpose of registering trademarks. It is updated every five years and its latest version (10th) of the system groups products into 45 classes (classes 1-34 include goods and classes 35-45 include services), and allows users seeking to trademark a good or service to choose from these classes. Since the system is recognized in numerous countries, this makes applying for trademarks internationally a more streamlined process

What are the classes in the Nice Classification?

The Nice Classification is a system of classifying goods and services for the purpose of registering trademarks. It is updated every five years and its latest version (10th) of the system groups products into 45 classes (classes 1-34 include goods and classes 35-45 include services), and allows users seeking to trademark a good or service to choose from these classes. Since the system is recognized in numerous countries, this makes applying for trademarks internationally a more streamlined process.

How do I select the most appropriate classes for my trademark?

Our trademark consultants would be happy to help you choose the class that is most appropriate for your trademark. After selecting a common category, the system will automatically recommend appropriate international standard categories, so you can choose classification of goods and services in line with international standards.

My trademark is being used by someone else’s Twitter account, can I get it back?

Yes, as long as you can prove that you are the rightful trademark holder. If you have an existing Twitter account, you can submit all of your trademark registration information, along with your personal/company information to Twitter. Twitter will review the information and make a decision on the handler. If you don't have an existing Twitter account, you can still submit a trademark report. As a registered trademark holder, you can report possible violations to Twitter's Policy Team through support forms: https://support.twitter.com/forms/trademark For the full Twitter Trademark Policy, please see: https://support.twitter.com/articles/18367# Other social networks have similar trademark policy to protect trademark holders and their brands.

What is the period of validity of a China registered trademark?

The period of validity of a registered trademark is ten years, counting from the date of registration approval. If you want to continue to use the registered trademark beyond this, an application for renewal of the registration must be made.

What is a US common law trademark?

A trademark used in commerce before Federally registered. Common law begins when the trademark is used for the 1st time in commerce within a geographic area. The use of the trademark must be continual and deliberate.

Should I register my trademark in the US if I am using it as a common law trademark?

Common law rights are limited only to the geographic area in which they are used and possibly to some areas of reasonable expansion. If you ever plan to conduct business outside of your geographic location (local jurisdiction) a Federal registration is required. Federal registration- that is trademarks registered with the USPTO- are given geographic protection across the entire USA. In addition, Federally registered trademarks are granted a higher degree of protection in Federal Courts than their common law counterparts.

How to check if a trademark is registered at the USPTO?  

USPTO stands for United States Patent and Trademark Office which is responsible for reviewing trademark applications for federal registration and determining if an applicant meets the registration requirements. To check a filed US trademark, go to USPTO website, and click Search trademark database. You will see several options to conduct a search. Depending on the type of marks you are interested, choose the appropriate search option. Once you arrive at the Trademark Electronic Search System page, type in your Search Term to conduct a search, and the system will show you results of the marks that contain the search term you entered. From there, you would know if a trademark you want is already registered or not.    

What is the most efficient way to file for a trademark?     

The trademark application process is complex and lengthy. In the US, it usually takes 8 - 14 months from filing your application to registering your federal trademark; whereas in Canada, the same process takes even longer 10 - 18 months. Therefore, it is recommended to hire experienced professionals to file and monitor the process of your trademark application. Hiring a trademark lawyer/attorney is always an option, however, fees also tend to be higher. For example, a trademark lawyer charges around $1,500-$2000 for the general filing process, excluding the hourly cost for any potential dispute.Another option is to go through trademark service providers associated with experienced lawyers and attorneys which offers a similar service but at a much lower cost. 

What are the USPTO fees for Trademark Applications?     

The United States Patent & Trademark Office has three options for filing applications through the Trademark Electronic Application System (TEAS) — TEAS Plus, TEAS Reduced Fee (TEAS RF) and TEAS Regular.  The initial Application Fee for Electronic Filing is as follows:  

  • Option 1 (TEAS Plus) : $225
  • Option 2 (TEAS Reduced Fee): $275
  • Option 3 (TEAS Regular): $400

Refer to the USPTO link below if you want see a more detailed breakdown. 

https://www.uspto.gov/trademarks-application-process/filing-online

Note: Almost all trademark fees for any part of the process are calculated on a "per class basis" for all listed goods and/or services, which will make overall fees higher if goods/services fall in more than one class. Also, fees presented here are based on electronic filing (paper filings are permitted, but have much higher fees).

How to register your trademark in Canada?   

In Canada, registration of a trademark consists of having the trademark entered on the Trademarks Register of the Trademarks Office of the Canadian Intellectual Property Office of Industry Canada ("CIPO"). The entire process takes approximately twelve (12) to eighteen (18) months, unless there are opposition proceedings, in which case the process can be much longer.    

How long does a trademark registration last in Canada and the USA?    

In Canada your registration is valid for 15 years.  In the USA your registration is valid for 10 years.

Can you register a trademark with a city name in it?    

In the right circumstances, you can register a trademark with a city name in it. You can apply for a trademark with a city name in it If the city’s name is used as part of the brand name for your company’s products or services, However, just because you are able to obtain a registered trademark for that city’s name, you do not own the city’s name, nor do you own the city. Trademarking that city’s name will prevent other companies from using the city’s name in association with a product or service similar to yours. If you wish to trademark a city name, you should contact a trademark professional to conduct a search of current trademarks. It is possible that someone already owns the trademark for your desired city name as it is very common for local businesses to include these city names in their promotional slogans or business names.

How quick a trademark is registered?

In the US, it usually takes 10 - 14 months from filing your application to registering your federal trademark; whereas in Canada, the same process takes roughly 12 - 18 months. The process depends on how quick the correspondent responds to any substantial/non-substantial office action from the local trademark office. 

Who can apply for trademark registration?

In theory, anyone could register a trademark as long as he/she supplies the necessary information to file the trademark. In Canada, you will need to provide your name, business name, address, a representation of your trademark such as a drawing and other required information in order to begin the process. Nevertheless, filing a trademark is not equivalent to a trademark registration. There is no guarantee that your application will go through successfully.

Does a logo need to be trademarked? 

Trademarks are symbols, words, logos, sounds or shapes that differentiate your goods or services from its competitors. A logo can be trademarked when you are ready to do so. Once you registered your trademark, you are entitled to protect your logo from imitators, and persuade legal actions if your right is violated. 

Can you use the "TM" symbol without registering?    

Yes.  In the US and Canada, you may use the “™” designation to alert the public that you consider yourself the owner of the mark. It is not mandatory to have filed an application with the United States Patent and Trademark Office (USPTO) or the Canadian Intellectual Property Office (CIPO). The symbol "™" may be used whether you intend to register the mark or not.    

How long does it take to get a Canadian trademark?    

In Canada, the whole process from start to finish, from filing your application to getting your trademark registered, usually takes about 18 months on average.

Should I trademark my brand name?

A brand name is a company's identity and valuable asset which carries the ability to influence consumer purchase decisions.  Lots of resources and investments are made to build up brand names. By trademarking your brand name has the following benefits:

1. Protecting the brand name, logo nationwide with  an exclusive right to use the mark. 

2. Deterring other parties from infringing your mark, depreciating the value of the goodwill invested in the brand.

3. Providing the owner with greater remedies, giving him or her an automatic right to sue in federal court and recover from the damage caused by an infringement. 

What is required to trademark a name?  

In order to successfully trademark a name, your mark needs to be either inherently distinctive or has acquired distinctiveness overtime through the owner’s usage. A mark that is descriptive in the beginning could acquire secondary meaning in the process. For example, if the public later associates your trademark that was originally descriptive with a particular source, manufacturer or producer, then it has acquired distinctiveness and can be submitted to the Trademark Office. Refer to our blog article below on how to pick a good name to trademark.

https://trademark.witmart.com/blog/Top-Things-to-Consider-When-Deciding-on-a-Trademark.html

How to find out if a logo is trademarked in Canada?

You can find out if a word, slogan or logo is trademarked as well as its current status in Canada by searching in the Canadian Trademarks Database on the CIPO website.

https://www.ic.gc.ca/app/opic-cipo/trdmrks/srch/home

What information do I need to file for a trademark?  

You will need the following information to file a trademark application:  

  • Personal Information (i.e. Name, address, email address this includes businesses);
  • Type of trademark - Word Mark, Stylized Mark, Design Mark (Logo) or a Combined Mark
  • Date you began using the mark in commerce and selling the goods & services;
  • If you have not used the goods & services in commerce then you will have to provide proof at a later point;
  • Description of the Goods or Services you provide (This helps classify the goods or services you are trying to trademark); and  Specimens (Usually photos) that show the Trademark you are registering.

How does one register a trademark in the USA for non-residents?   

For most non-resident filers the same process is used for all trademark applications in the US, but there are different ways to file. If you have already filed for a trademark in your own country please see our blog article on foreign filings to see if you can take advantage of the priority filing.  However, to file as a non-resident you will need to be represented by US Attorney or a qualified non-US attorney recognized by the USPTO. 

How do you protect a trademark on the Internet?

There are several steps to limit the infringement of your trademark on the Internet:

  • Use the mark consistently in commerce.
  • Obtain domain names and social media tags not only for the trademark but also derivatives of that mark.
  • Use proper trademark notices: ™ for marks in use but not registered and ® for registered marks. Proper notice alerts third parties of your rights and provides additional protections.
  • Monitor use of your mark: supervise licensees to ensure proper use of the mark; keep an eye on use of the mark online — sign up for programs like Google alerts, and pay attention to social media sites that your customers might frequent like Facebook, Twitter and YouTube.

How many times do I need to display the Trademark symbol(®) on my website?

You should display your trademark symbol at least once, in a prominent area of your site.  If it is a logo that is in the header or prominently displayed on a page, the trademark notice should definitely be used. You don't want it to be distracting if you have a lot of text. You don’t need to have it displayed after every instance of your product every time it appears on your website.

You should also include a mention of the trademark in the footer of your web-page as follows:

"ABC trademark(s) is a/are federally registered trademark(s) owned by ABC Company. Any unauthorized use is expressly prohibited."

What are the strongest trademarks?

The strongest marks tend to be fanciful or arbitrary. Invented words, like Zynga, and words with no association with the protected goods, such as Apple, are stronger than marks that are merely suggestive or descriptive. 

Should I register my trademark internationally?

Foreign filing considerations are largely business decisions. The most important target jurisdictions are those that are or will be commercially significant for ones company. In choosing where to file, consider:

  • What countries have sizable revenue streams or consumer bases for your company?
  • Do you have business operations overseas?
  • Is your company’s relevant market or targeted need growing or significant in a particular country or region?
  • Do you have anticipated expansion plans abroad?
  • Consider “defensive” filings in countries with high rates of counterfeits, copycats and piracy.

Can I trademark a word?

Common words and phrases can be trademarked if the person or company seeking the trademark can demonstrate that the phrase has acquired a distinctive secondary meaning apart from its original meaning. That secondary meaning must be one that identifies the phrase with a particular good or service.

What's the difference between registered trademark® and trademark?

A registered trademark or service mark uses the circle-R symbol to indicate that it has been approved and officially registered whereas TM is used to signify the mark's common-law rights and/or to demonstrate that the applications were submitted but not yet approved.  

If i register a trademark in Canada, is it protected in the US?  

No, trademarks or service marks are jurisdictional, meaning that a registration in Canada will not protect your mark in a foreign county such as US. The mark is only protected within the country in which you register your trademark under.