Explaining The Trademark Process

Category: Trademark Information

It is no secret that the trademark process can be very time-consuming and confusing. It can be difficult to navigate through the various requirements necessary to accurately complete the application and register your proposed trademark. This is why it’s highly recommended getting help from professionals who know all the in’s and out’s of trademarking such as Pinnacle TMS – because they work with the relevant Trade Marks Office every day.

To help you better understand the trademark application process here in Australia, here is a breakdown of what you can expect when you trademark your business or brand name with Pinnacle TMS.

Our approach to the trademark application process comes in two separate stages.

Stage 1: Initial Protection Review and Strategy Report

In this stage, Pinnacle TMS will conduct research and provide important information that you need to know in order to successfully submit a trademark application. This includes whether your trade mark is available to registered, relevant prior registrations, what classes of goods and/or services your proposed trademark application should cover and also, importantly, the wording that should be included in each class.   If your trade mark is too similar to another prior mark, this can cause future problems for your business such as being potentially sued for trademark infringement and having to rebrand your business while existing customers are already ingrained with your previous brand.

In addition, Pinnacle TMS will ensure that your trademark has a high possibility of being accepted because the application fee cannot be refunded. It also means that you will not waste your time on a trademark that is likely to fail from the start.

Stage 2: Application and Examination

Once we conduct the Initial Protection Review and Strategy Report, we will file an application that is best suited to your trademark with the Trademarks Office. Depending on the type of application that is filed, a response from the Trademarks Office may take approximately 3 months after it has been lodged. However, if you wish to have your application fast-tracked, Pinnacle TMS can request a response within 5 working days.

The next steps in the trademark application process depends on the result of the examination of the mark. If the application is successful, the waiting period that gives other businesses the opportunity to object to the trademark registration request begins (ie 2 months).  Assuming no issues, then a certificate of registration will issue around 8 months from filing the application.

However, if there is an issue with the application, a report outlining the reasons why will be provided to you. You then have 15 months to overcome any issues raised. Professional such as Pinnacle TMS can provide options and strategies to help get the application accepted for registration where this is possible.

If your application is accepted for registration and there is opposition to your trademark then we will liaise with a lawyer to assist in this event.

Once a trade mark is registered, no further fees are paid for a period of 10 years. It is important to note that no changes can be made to the trade mark during that time.

Trademark renewal process

At the end of the 10 year registration period,, trademarks must be renewed for a further 10 year period. Pinnacle TMS will guide you through the trademark renewal process to make sure that you do not lose your trademark.

While this is a simplified overview of the process, the procedure can be difficult due to the technical jargon, critical deadlines and various requirements that must be met. To make sure your trademark application process runs as smoothly as possible, Pinnacle TMS can help you with your research and application. To get advice that is specific to your situation, we offer a range of consultation options so that you can speak directly to a professional about your trade mark needs. To select a booking to suite you, click this link. Alternatively, you can email us at info@pinnacletms.com.au or call +61 2 9520 4366.