Registering Trademarks Outside Your Home Country: A Checklist of Filing Instructions to Foreign Associates

Transcription

1 Registering Trademarks Outside Your Home Country: A Checklist of Filing Instructions to Foreign Associates Suman Naresh International Strategy Group, LLC, Long Beach, California, United States 1. Your File Reference Indicate your file reference 2. Client File Reference Indicate your client s file reference 3. Type of Filing Specify type of trademark filing: Registration application (priority, expedited or regular) Cautionary notice application Renewal Affidavit/Declaration of Use/Nonuse Recordal of assignment Recordal of transmission Recordal of name change Recordal of address change Recordal of license, lien, merger, etc.

2 4. Country/Jurisdiction of Filing Specify country/jurisdiction of filing. Note that certain countries may have more than one jurisdiction for filing (e.g., Tanganyika and Zanzibar in Tanzania). 5. Searches Indicate whether any pre-filing searches are to be carried out, and if so: The type of search (knock-out, identical, similarity, availability, logo search, proprietor search, common law search) Class(es) in which search is to be carried out Whether search results are to be provided Whether legal opinion re: search results/availability is to be provided 6. Representation of Mark Attach representation of mark (if possible) 7. Type of Mark Identify the mark that is the subject of the application, and then indicate whether it is a: Word mark Composite word and design mark Design mark Other mark (certification, collective, etc.) Other (non-traditional) mark (3-dimensional, sound, smell, etc.) 8. Special Features of Mark/Application Indicate whether mark is to be filed: In STANDARD (BLACK & WHITE) CHARACTERS In stylized form With color claim (provide description of color(s) claimed) With disclaimer (specify precisely part(s) of mark to be disclaimed) 9. Filing Basis Indicate whether application is to be filed on basis of: Use in country (provide date of first use and specimens of use) 2

3 Making known in country (where applicable e.g., in Canada provide relevant dates and supporting information) Intent to use in country Foreign registration (provide details of foreign registration: country, filing date & number, copy of registration certificate) Foreign use (Where applicable e.g., in Canada provide relevant dates and supporting information) 10. Priority Indicate whether priority is to be claimed, and if so: Provide details of priority claimed (priority application number and filing date) Indicate six-month priority deadline Attach copy of pending priority application (or registration certificate, if already registered) 11. Applicant Name of applicant Address of applicant Indicate whether applicant is an individual or a legal entity If a legal entity, indicate type of legal entity (corporation, limited liability company, partnership, etc.) Nationality/state or country of incorporation of applicant 12. Single-/Multi-class Application Indicate whether application is to be filed as a single-class application or a multi-class application 13. Number & Type of Class(es) Indicate: Number of class(es) Whether class(es) are National or International 14. National/International Class(es) Indicate national/international class(es) in which application is to be filed 3

4 15. Specification of Goods/Services Provide complete specification as it is to be filed Inquire as to any special rules in country/jurisdiction of filing regarding maximum allowable number of distinct goods & services, and/or characters, in specification (e.g., as in Japan and Thailand), and costs of exceeding limit 16. Documents Provided with Filing Instructions List all documents provided with Filing Instructions (representations of mark, priority document, executed Power of Attorney, etc.) Check whether all execution requirements (simple signature, notarization, legalization, Apostille) have been duly satisfied 17. Foreign Associate Indicate name and address of foreign associate 18. Terms of Engagement of Foreign Associate Indicate: Whether Engagement Letter is to be signed, and if so, date of signing and attach copy Whether Foreign Associate available to undertake representation in the event of issuance of Provisional Refusal in Madrid System filing Agreed costs (professional fees, official fees, disbursements) of filing Agreed post-filing costs, if any 19. Correspondence Instructions for Foreign Associate Specify mode of correspondence ( , fax, registered/certified mail, courier, web portal, etc.) Identify person(s) to whom correspondence should be addressed, to whom it should be copied, etc. Provide all relevant postal and addresses for correspondence 20. Invoicing Instructions for Foreign Associate Indicate when invoice should be issued by Foreign Associate 4

5 Indicate any special invoice format to be used, and any supporting information/documents (e.g., filing receipt) to be provided with invoice Specify how invoice should be sent ( , fax, registered/certified mail, courier, web portal, etc.) Identify person(s) to whom invoice should be addressed, to whom it should be copied, etc. Provide all relevant addresses for invoicing Indicate payment terms (e.g., 30 days net, etc.) 21. Special Instructions List any special/unusual instructions for Foreign Associate, such as (for example): Copy of application as filed to be provided immediately Official filing date and receipt number to be provided as soon as they are available File without any executed documents, if it is possible to do so in the country in question without triggering a deadline or incurring any additional cost In absence of instructions, meet any deadlines and do not allow application to lapse, etc. 5