Top Benefits Why You Should Hire a Registered IP Attorney or Firm for Your Trademark Registration.
A trademark is an asset of great commercial value that serves, among other purposes, to identify your company, business or product in the market and to differentiate it from those of other competitors.
Therefore, it is highly recommended, not to say necessary, to apply for the registration of the trademark you intend to use or are already using in order to obtain an exclusive right of use, so that, once it is registered, you can use that name or logo for certain products and services with the peace of mind of not being claimed by others.
In turn, the Law will entitle you to prevent the use and registration of others when they use a very similar sign for related goods and services.
Those who have a simplistic opinion and believe that registration is an easy task, that it is just a matter of basically checking the name to see if it is free and register it at the Trademark Office, without the need for anyone to advise them, well, in many cases it can be that simple, but in others it would not, where the trademark application process can become complicated, involving serious difficulties and complexity for neophytes or non-experts in this matter, which could give rise to future inconveniences or legal consequences, if at the time of applying for protection certain relevant and foreseeable aspects are not contemplated or omitted from the very beginning.
Just as when we go to a doctor to solve a health problem (although we all have the freedom to cure ourselves by means of the methods we each consider appropriate), for matters related to the registration of trademarks, it would also be logical to choose a trusted agency and be represented by its intellectual property agent, since they are the experts for these matters, but it is an official IP agent (registered attorney) who will be able to represent you and provide you with several advantages if you decide to hire the services of the specialized team of his IP agency at the time of registering your trademark, considering his expertise and value added services he offers on trademarks, being knowledgeable on the applicable laws and regulations, practices and criteria followed in examination procedures by the Trademark Offices (SPTO, EUIPO, WIPO….).
As in other sectors, as far as trademarks are concerned, there are good professionals, even in a negative sense, some mere computer-based companies treat trademarks as if it was a domain registration process, offering the request with no added value in return, under derisory or minimum prices, not to say impossible to offer a good service, such as an adequate follow-up, a contact, or providing a continuous updated information to name a few, but as it is often said in marketing “If you’re not paying for it, you become the product” and the truth is that something suspicious is hidden and we will have to ask ourselves, if I am not charged on one side, will I be charged on the other? The professional experts of an industrial property agency can be important allies in the defense of your company’s trademark interests, regardless of the size of your business.
Nonetheless, without going into too much detail, we would like to focus on the great advantages that you will benefit from when you are assisted by an IP firm or agency you trust when planning to register your trademark, which we list as follows:
The planning of the trademark strategy, through a fluid dialogue with the interested applicant, the agent and his team will be a decisive help to avoid all those foreseeable mistakes from the very beginning, prior to the filing of the trademark application, who will have to evaluate different aspects:
what, how, when and where to protect, that is to say, the degree of distinctiveness of your trademark (if it contains descriptive or generic elements or breaches any of the absolute grounds for refusal), how you will present that trademark to your customers, the territories of protection where you are interested in expanding the protection of your business, according to your needs and budget, products to which the trademark will be applied to or services to be rendered under your brand in the marketplace, but always with the purpose of obtaining the widest possible protection on the sign and/or logo, reviewing other predominant or secondary elements of the trademark to be filed, including a correct expression of the products and services according to the subsequent use you intend to make, and in short, you will be able to avoid the most frequent filing errors that could threaten the validity of your industrial property rights in the future, so that there are no errors or omissions to be regretted later on.
It is worth mentioning that the Trademark Offices, although they can provide basic assistance to the applicant, on the contrary, and being regulatory and examining Authorities of trademark matters, such Offices DO NOT PROVIDE ANY LEGAL ADVICE TO THE USER and therefore, they will not analyze in depth or in a personalized manner the trademark to be filed, or the risks that on the other hand could easily be foreseen by an agent.
The Offices will only carry out an examination of the grounds and check the formalities of the trademark in question, but after being filed and then published in their respective Official Gazette for the purpose of possible oppositions by third parties within a fixed period, after which they will issue the corresponding provisional refusal, if there are objections, notifying the applicant of the causes, as well as the deadlines to remedy the defects or objections or to file observations in defense against an opposition filed by a third party.
A prior viability search, (let us differentiate between “literal availability” and registrability) to be performed in all the Trademark Office Registers where you intend to market and register your trademark, in order to help you know if your trademark name is viable for your new product or service of your business before applying for the trademark or, on the contrary, if there are identical or similar earlier trademarks that could potentially conflict with your trademark, all this right before starting to use that name/logo, by checking for prior trademarks that could be conflicting with yours.
Consequently, a prior search performed by an agent, (as an expert in interpreting the result) should be done in the corresponding classes (headings) of goods and services, as well as in other classes that may be in connection. A good search can save you time, costs and unnecessary design and advertising efforts, as well as avoid conflicts with other companies or unwanted legal liabilities for wrongly using a very similar name to that of an earlier registered trademark of another person or company (for infringement of use).
Taking into account the result of the search, the agency should propose you alternatives, such as possible alterations to customize the name or logo so that the trademark becomes sufficiently distinctive and thus reduce the risk for being opposed or, if necessary, propose you to discard and think of another trademark, in order to avoid costly risks of conflict with competitors.
The filing of the trademark application on your behalf, taking into account beforehand who should hold the ownership of the right, considering the relevant aspects and the correct form in which it should be applied for: one or several classes (45 headings) of goods and services, design, colors, predominant element, other secondary elements, etc. Generally, IP firms and agencies offer fixed fees for filings and follow up of the trademark process in which they add their fees to a specific official fee, which will vary according to the number of classes or headings (45) of goods and services you decide to include for the proper protection of your trademark.
With the official filing of the trademark application, the right of priority begins, since a number, date, hour and minute of filing will be assigned to the application, but this filing will be a provisional right, which will have to go through a whole process before the Trademark Office until it becomes a full right that you can enforce, and can be so called a Registered Trademark.
The follow-up of the trademark application procedure until the final decision, in which the agent must duly inform you of any official communication received from the Trademark Office, and send you the publications and notices of all deadlines to be taken into account, in addition to giving you any preliminary advice, if necessary, on each step to follow in case of possible objections pointed out by the examiner of the Office, if during the procedure your trademark has been provisionally refused ex officio due to defects of formalities or if a third party opposes your mark, where the agent will study the reasons for the opposition, the relevance and differences between your sign with respect to the prior right on which the opposition was based and will reply with the necessary allegations to defend your trademark from third party oppositions, all with the aim of achieving the desired success of the grant/registration of the trademark in question and thus a solid and effective protection of your trademark, and as far as possible without limitations or restriction. Although he can make a good forecast in view of the conflict and actual situation, the agent will never be able to guarantee your success with absolute certainty (in the same way that a doctor will never assure that he will be able to cure a disease).
You will also be notified by your official IP firm/agency well in advance, including reminders, of the deadline for the next renewal of your trademark, which will generally be valid for 10 years from the date of application, renewable indefinitely for successive periods of the same duration. They must also inform you of the obligation to use the trademark by means of your business turnover, advertising investment and promotion, as well as the period and situations in which you may eventually have to prove use.
A continuous surveillance of your trademark, during the application process and after its registration during its validity term, to keep an eye and alert you of those new trademark applications published in the Trademark Bulletin that could have any type of incompatibility and create a likelihood of confusion or association with your prior trademark right, giving you the opportunity to file opposition within a certain term fixed by each Trademark Office, to obtain its refusal and also to negotiate or even formally request for identifying an illegitimate use of such application.
Here, your IP agency will have to prepare the necessary allegations supporting the notice of opposition, and should be grateful if you provide them with comments, details or relevant proofs, facts or evidences to be alleged during the exchange of observations of the opposition or appeal procedure.
The undoubted value of the watching service provided by trademark agencies, as well as the need to file an opposition (always voluntarily and expressly) against those new potentially confusing and conflicting trademarks applied for by your competitors so that your trademark gains in strength in terms of registration exclusivity and is not weakened or diluted by tolerance, that is, if very similar trademarks registered and used by third parties for related goods and services were allowed to coexist in the registration and in the market. Therefore, the question should be asked here: why do I want to have a trademark that I do not defend?
You should be aware that tolerance of other applications dilutes your trademark, limiting its real distinctive capacity and its strength in the market.
It is also relevant to point out that although the registrations of the Trademark Offices, the SPTO (regulates national trademarks in Spain) and the EUIPO (regulates European Union trade marks in EU countries, including Spain) could overlap, on the contrary, THE TRADEMARK OFFICES NEVER INTERFERE WITH EACH OTHER WITH REGARD TO THE SENDING OF NOTICES OF INCOMPATIBILITIES, which means that the SPTO will not notify the holder of an earlier national trademark of the existence of a potentially incompatible EU trade mark and, vice versa, the EUIPO will not notify the holder of those new Spanish national trademarks that could be confusingly similar to an earlier EU trade mark. Therefore, the watching service provided by an agency would be essential to defend your trademark, since it would complete in a more exhaustive way than the basic notification service of the Trademark Offices.
Other trademark related actions and matters that your IP firm/agency could take care of, would be those concerning:
- the recordal of licenses of use, name changes and transfers of ownership, so that the rightful owner has full control over the ownership of the right.
- legal assistance for the defense of your rights in litigation, trademark infringement proceedings, either as plaintiff or as defendant before the competent Spanish Courts in commercial matters or before the European Court, which some agencies may also represent you and provide a helpful defense, always with the aim of avoiding potential conflicts with third parties or to cushion them as far as possible, trying to negotiate to reach amicable agreements.
- the preparation of warning letters to third parties in order to cease that infringing use (without your consent) or against acts of unfair competition in trademark matters.
Quality guarantees: The official registered agent is the only professional who will offer guarantees of quality and expertise in terms of good advice, knowledge of the laws in force on the matter, by means of his proposals and the performance of the actions to be carried out (although in no case will he guarantee the success of the actions) and will always treat each trademark matter with the utmost diligence in accordance with the availability of means and infrastructure and with due confidentiality. To ensure all of the above, the agent is obliged to take out civil liability insurance.
Confidentiality: When you decide to hire the services of an official agency you should be assured that you will be treated with confidentiality because its statutes, both those of the Association of IP Agents and the Lawyers’ Association, obliges the agent and all the professionals of his team to keep any information provided by the client strictly secret, using it only for registration purposes, or for those intended for the preparation of a recommended protection proposal or opinion on the eventual feasibility of your trademark.
