The Trademark Comprehensive Study will help you determine if you can use or register your trademark.

A great number of trademark applications are rejected during the registration process because of the following reasons:

Pre-existing registrations of similar trademarks (either graphically or phonetically) that may cause a “likelihood of confusion”.

Similarities with well-known foreign trademarks that may or may not be registered in the specific country or territory.

Refusal of registration of a trademark that may be considered generic, indicative or descriptive.

Use of certain words, names, symbols or other marks that are not acceptable for registration.

The Study will warn you about these cases, so that you can change your trademark or adapt your application to avoid a possible rejection from the Trademark Office.

The Study will also help you ensure that the use of your proposed trademark will not infringe upon the rights of another party, and thus reduces the risk of any challenge or lawsuit from the owner of a trademark with prior rights.

By ordering a Trademark Comprehensive Study, you can, in the long run, avoid expenditures of applying for a trademark that will be rejected, reduce the risks of being sued and advance in the drafting of your application to avoid rejection based on potential obstacles identified by the Study.

The Comprehensive Study can be requested for three types of trademarks:

• Word Mark if your trademark is composed of text elements only. This could be a single word, phrase or slogan.
• Logo or Figurative Mark if your trademark is composed of only designs and does not contain text elements.
• Combined Mark if your trademark is composed of designs (Figurative Mark) and text elements (Word Mark).

The Study includes the following sections:

a) Scope of Analysis

Identifies the class(es) that would be advisable for you to register your trademark in. The classes are determined according to the description of the products/services that will be used in connection with your trademark.

b) Trademark Search

Taking into account the established Scope of Analysis, attorneys will perform an in depth search of existing filed and registered trademarks that present any graphic or phonetic similarities with your proposed mark.

c) Analysis and Recommendations

Based on the search results, the attorneys will deliver general recommendations and an estimation of the probability of obtaining the trademark registration.

Both types of studies, Basic and Extensive, include a search and the opinion of a US licensed attorney. The studies differ in the depth of the search performed.

Basic Study:

Includes searching the federal trademark database (USPTO), the World Intellectual Property Organization (WIPO) database, and the state trademark registry databases in 50 states (view list).

Extensive Study:

In addition to the databases from the Basic Study, it includes searching “common law” databases, taking into account: web search engines, WHOIS domain databases, yellow pages, apps, online products and services, among others

In order to file your trademark application in the USA, the following is required:

Trademark Information

You will need to provide information about the trademark and the goods or services that will be used in connection with the trademark. The name and address of the owner of the trademark is also required. This information will be requested once you fill out the trademark registration order form.

Power of Attorney

In USA, no Power of Attorney is needed to file your trademark. A Power of Attorney is needed in case you have already filed your trademark and you want us to be your new representative.

Examination

In this phase, the Trademark Office will review your trademark application and check if all formalities are accurate and complete. Then, the Trademark Office will review the trademark itself and check:

-Preexisting registrations of similar trademarks (either graphically or phonetically) that may cause a “likelihood of confusion.”

-Similarities with well-known foreign trademarks that may or may not be registered in the specific country or territory.

-Whether the trademark could be considered generic, indicative or descriptive.

-Use of certain words, names, symbols or other marks that are not acceptable for registration.

Publication

If the application passes the Examination phase, the trademark will be published.Third parties can oppose your application for a period of 30 days after the trademark has been published. If an objection or opposition is received, you will be informed about this along with the possible measures that can be taken. If no one opposes the trademark, then the trademark will be approved for registration.

Registration

After publication, if there is no pending objection or opposition, your trademark will be approved for registration.

In USA, the approximate time from filing to registration is 12 months.

Both objections and oppositions are obstacles that can arise during the registration of your trademark. If they are not addressed, the trademark will most likely be rejected.

Objections

Objections are concerns that the Trademark Office might have during the “Examination” phase of your trademark. In order to overcome the objection, our attorneys will need to file a response to the Trademark Office.

Oppositions

Once your trademark is published, third parties can oppose your application. There might be different reasons for oppositions; the most common is on the grounds of it not being distinctive. In order to overcome the oppositions, our attorneys will need to file a defense with the Trademark Office.

To decrease the risk of objections and oppositions, we recommend ordering a Trademark Comprehensive Study before proceeding with the application.

When filing a trademark application in the USA, a “Filing Basis” must be selected. You can select from four possible options:

“Use in Commerce” basis

If you are currently using your trademark in the USA, your application can be filed on a “Use in Commerce” basis.

In this case, you will need to provide the date of first use and also send proof that the mark is being used in the USA. Acceptable proof of use (also called “specimens of use”) might be: a page from a website, an advertisement, a brochure or a pamphlet that describes the product/service and shows the trademark. Labels, tags or packaging are also considered acceptable proof of use for a trademark.

“Intent to Use” basis

If you are not using your trademark in the USA, your application can be filed on an “Intent to Use” basis. In this case, your application will be processed normally, but once it is accepted for registration (approximately 10 months after the filing date), you will be required to show proof that the trademark is being used. In order to do this, a “Statement of Use” must be filed in which a proof of use is presented to the Trademark Office. This will be considered as a separate service.

Note: If you are not able to provide the proof of use by the deadline, you can request an extension every six months (for up to 3 years from the acceptance notification).  

“Foreign Registration” basis

If your trademark is registered in another country, your application can be filed on a “Foreign Registration” basis. In this case, no proof of use is required for the registration to be granted.

For this kind of application, you will be required to send a scanned copy of the foreign Registration Certificate, along with a translation signed by the translator. However, the trademark must be registered in country in which the owner of the mark has a bona fide business address. 

“Foreign Application” basis

If your trademark has been filed during the last six months in a country in which the owner of the mark has a bona fide business address, your application can be filed on a “Foreign Application” basis. In this case, additional information will be needed once the trademark is accepted for registration. You will need to provide either the foreign Registration Certificate of the trademark or proof of use in the USA.

For all of these cases, a Declaration of Use must be submitted between 5 and 6 years from the registration date.