Trademark Registration Process in the US and The India: Key Differences
INTRODUCTION
The time it can take to register a trademark can therefore take longer depending on several factors such as the jurisdiction to which it was processed, the materials that have been included in the application as well as whether there are opposing voices or objections prevailing over the trademark. Depending on the complexity and the volume of work, it can take several months up to couple of years. The process of trademark registration, the approximate duration of each step and their description are as follows:
PRIMARY STEPS IN THE US
Step I: Conducting a Trademark Search
Nonetheless, when deciding on the appropriate mark to apply, it is crucial that a trademark search is done so that it can be established that the mark has not been registered by any one for use in connection with similar goods or services. This step may take a few days to a few weeks depending on the time that requires carrying out the search and the extent of the search that needs to be done. For a professional search it is wise to consult a trademark attorney or get professional help from trademark search company.
Step II: Filing the Application
The search then has to affirm the availability of the mark before one can proceed and prepare as well as file the application. This entails collection of all FileInfo(s) of the mark which includes a written definition of the mark through the proprietor, a written specification of the goods or services to be rendered associated with the mark, and the grounds for filing the mark, use in commerce or bona fide intention to use in commerce in the United States. In making the application, it may also take several days, but it may also take weeks depending on the preparation that is done besides the complexity of the mark that is being sought to be registered.
Step III: Examination Phase
As with any process involving official institutions, the trademark office performs an initial assessment of the application to determine its compliance with the minimum filing requirements. This preliminary review may take 2- 6 weeks; in some cases, it may span a couple of months.
Step IV: Substantive Examination
The second phase of the process where a trademark examiner considers the mark in light of all legal standards and most importantly, the distinctiveness of the mark and non-violation of the trademark laws. Depending on the project specifics and the type of problem, this phase may take several months; it might range from three to six months. If the examiner has certain concerns about the registrability of the proposed mark, or overlaps of the mark with any of the existing registered marks, which can possibly create confusion, then, the examiner may publish an office action. Office action response again may take little extra time depending upon the objections given and the time taken to reply to it that is may take about several months.
Step V: Publication for Opposition
In case the application is substantive examined, it is published in an official gazette or bulletin to deter opposition. The publication period affords a third party an opportunity to oppose the registration on the grounds that it is likely to affect his/her/trusts trademark rights. It is usually for 30 days, but depending on the territory, sometimes it can be prolonged if, for instance, the potential opposer desires more time.
Step VI: Opposition Proceedings
If the opposition is made, the trademark office scrutinise the case presenting both sides of the applicant and the opposer. After filing for a trademark, opposition proceedings can further extend the time it takes to obtain registration and this can range from several months to even a year or more depending on the case and competence of the trademark office.
Step VII: Registration and Maintenance
In the event that there is no opposition, or in the case the opposition is settled in favor of the applicant, the trademark office will then proceed to grant the mark a registration. Outlining the registration certificate may take few weeks to several months, following the closure of the period for opposition or where there is a resolution of any opposition.
TRADEMARK REGISTRATION IN INDIA
Step I: Pre-Filing Requirements
Trademark Search: Internet search through the Indian Trade Marks Registry to ascertain the feasibility of utilization of the mark.
Step II: Filing the Application
Submission: An application is made to Controller General of Patents, Designs, and Trade Marks either through an electronic format or in hard copy.
Information Required: Consists of the applicant information, a representation of the mark, a description of the goods/spell of services and the trade mark classification.
Step III: Examination
Initial Review: The Trade Marks Registry then examines the application to verify formalities that was discussed above next.
Substantive Examination: In the case where the applicant has been requested to submit any further documents, objections or grounds for refusal, an examination report is prepared and released within 30 days.
Response to Examination Report: The applicant has a right to be heard and will have one month to address the objections marked against him or her.
Step IV: Publication and Opposition
Publication: If the application is accepted, that is, registered it is then entered in the trade marks journal.
Opposition Period: An opposition can be filed, provided this has to be done within four months from the date of publication by a third party.
Step V: Registration
No Opposition: When there is no opposition, or opposition is refused or withdrawn or deemed to be abandoned or finally dismissed for non-sustainment or otherwise in favour of the applicant, then the mark proceeds to registration.
Certificate of Registration: Also available when the opposition period expires or when the opposition filed against the applicant or the application is decided in applicant’s favor.
Step VI: Post-Registration
Maintenance: With a frequency of every 10 years of the renewal process being taken into account. There are no specific mid-term maintenance filings needed for the trademark as a rule.
KEY DIFFERENCES
1. Jurisdiction and Governing Body
US: As discussed above the governing body of USPTO and the applications are to be filed through TEAS.
India: Hearing Controller General of Patents, Designs, and Trade Marks applicants can apply either online or in writing.
2. Application Basis
US: Permits the filing of patents using the “use in commerce” or intention to use parameters.
India: Basis usually use or intended use.
3.Examination Timeline
US: USPTO examination can take some time and can range for several months depending on the specific case.
India: The examination report can take between 2-4 weeks or even less and in other cases the time frame could be stretched due to procedural reasons as noted earlier.
4.Opposition Period
US: 30-day opposition period. Informal opposition Written opposition or informal opposition is usually filed by those who did not actively participate in the previous steps but wants to oppose the registration of a trademark in the long-term.
India: This is the period of opposition that a company has to go through before getting its trademark registered and known in the market.
5. Maintenance Requirements
US: This trademark must be filed every five years through a document called Declaration of Use, and renewed every Ten years.
India: This must be renewed every 10 years and no interim maintenance filings are needed.
6. Responding to Office Actions:
US: They can take as many months to reply to an office action, six of them to be precise.
India: After examination report, only one month time allowed to reply.
CONCLUSION
It would, nevertheless, be pertinent to mention that, though the legal framework governing the trademark registration in the US and India is not markedly dissimilar, there are certain significant differences between the two, particularly in terms of procedure, time-fetalities, and maintenance. Companies interested in trademarking and protection of their trademarks in the two countries should avoid these differences with keenly so that their trademarks can be registered and protected effectively. It is highly advisable to request those trademark attorneys who are experienced in the particularity of the jurisdictions to guide the process.
Author:–Kaustubh Kumar, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.
REFERENCES
- https://www.findlaw.com/smallbusiness/intellectratual-property/types-of-trademarks.html
- https://ipindiaonline.gov.in/trademarkefiling/user/frmNewRegistration.aspx
- https://ipindia.gov.in/trade-marks.htm
- https://www.uspto.gov/
- https://www.indiafilings.com/usa-trademark-registration
- https://www.uspto.gov/trademarks/basics/application-requirements
- https://www.uspto.gov/trademarks
