Jurisdictions

North America

 

Classification

Nice classification (11th edition)

WIPO-Administered Treaties

Paris Convention, Madrid Protocol, Berne Convention, PCT Patent Cooperation Treaty, Nice Agreement

Multiclass applications

Applicable

Priority claiming

Applicable

Opposition period

2 months

Protection period

10 years of the filing date

Trademark Registration Time Frame

18-24 months

Trademark Grace Period

6 months with no penalties

Renewal term

10 years

Use

Vulnerable to cancellation if the trademark has not been used for consecutive 3 years.


Required Documents for filing a trademark application:
- A scanned copy of a simply signed POA.
- The name, nationality, address, and occupation of the applicant.
- List/s of goods and/or services to be covered.
- Representation of the trademark, in (BMP, JPG, TIF) format.
- Copy of priority document if priority is claimed.

Trademark registration procedure:
Once a trademark application is filed, the trademark is examined by the CIPO in both form and substance. Authorities will examine the applicant’s compliance with requirements as the trademark will be inspected based on its clarity, descriptiveness, distinctiveness, deceptiveness, conflict with earlier applications, and other criteria that may apply. While the application is pending, the applicant obtains the right to use the country of origin filing date for priority purposes. If the trademark is accepted, the particulars of the application are made accessible to the public via the Trademarks Online Journal on CIPO's website for a period of 2 months. Particulars include name and address of applicant, the actual trademark, application date and number, priority claim, goods/services, date of first use and trademark representation. During the publication period any third party can oppose the application. If the opposition period lapsed with no oppositions, or if an opposition is rejected, the trademark will be registered after paying the registration fees, trademark registration is valid for 10 years as of the date of registration, renewable for similar periods of 10 years.

 

USA

 

Classification

Nice classification (11th edition)

WIPO-Administered Treaties

Paris Convention, Madrid Protocol, Berne Convention, PCT Patent Cooperation Treaty, Nice Agreement

Multiclass applications

Applicable

Priority claiming

Applicable

Opposition period

One month

Protection period

10 years of the filing date

Trademark Registration Time Frame

9-16 months

Trademark Grace Period

6 months with penalty

Renewal term

10 years

Use

A statement of continued use must be filed between the 5th-6th years after the registration date.


Required Documents for filing a trademark application:
- Scanned copy of the signed and sealed POA
- Copy of priority document if priority is claimed.
- The name, nationality, address, and occupation of the applicant.
- List/s of goods and/or services to be covered. Specific description of the list of goods. General terms are not accepted.
- Representation of the trademark, in (BMP, JPG, TIF) format.

Trademark registration procedure:
Trademark in USA are filed on one of the following bases:
1. Based on actual use of the trademark in commerce in the U.S.
2. Based on Intent-to-use.
3. Based on claim of Priority of a Foreign application.
4. Based on a Foreign Registration Certificate.
Once a trademark application is filed based on the above, it is reviewed by USPTO. If the application meets the filing requirements, it’s assigned to an examining attorney to review it. If the examining attorney does not find grounds for refusal, and the application satisfies all legal requirements, the trademarks will be published in the USPTO’s Trademark Official Gazette (TMGO, a weekly online publication) approximately within one month, giving advance notice to the public that the USPTO plans to register the trademark. If no opposition is filed the trademark will be registered in about three months period, trademark registration is valid for 10 years as of the date of filing the application and renewable for similar periods of 10 years, a statement of continued use must be filed between the 5th-6th years after the registration date to maintain the registration.