[FAQs] How to Successfully Register a Trademark?

          Trademarks should be filed following a clever and thoughtful strategy to securely and adequately protect your brand. Before you apply for a trademark be sure to remember the followings:

 

• Conduct a detailed preliminary investigation. Preliminary investigation and search on pending or registered trademarks are essential to judge the possibility of registration. Through preliminary investigation, we can look at the trends of competitors and existing trademarks to spot potential trademark issues before the application. Trademarks that are not distinctive or have a likelihood of confusion are expected to be rejected. Filing a trademark application with low registrability in the first place is a waste of money and time. Selecting the right mark and conducting a comprehensive trademark clearance search before trademark application is essential. 

 

To know more about the importance of Trademark Searches, please read What Are Trademark Searches and How They Help You Establish Your Mark?

 

• Contemplate your current situation and future business plans to seek the scope of rights you need. When a trademark is registered, it only protects the goods and/or services that were designated* at the time of filing. For a trademark application, you must designate the goods and/or services that are related to your business field. The Korean Trademark Act (KTA) follows the ‘Nice classification’* and is fundamental to choose the right classes for your application. When you are not sure about what goods/services you should designate, you may choose the broadest item in each class. Choosing the wrong class can mean a totally worthless registration. 

 

          Also, consider that in general terms, the more goods you designate, the wider the scope of protection you get. But the cost is also multiplied. You can designate a maximum of twenty goods in each class for free. For more than twenty items, an additional official fee will incur per item. 

 

          Since a registered trademark lasts for 10 years, you may want to include all classes you think you may want to expand in the future, and save money and time in the first place. It is possible to add designated goods/services to your prior-filed/registered mark by filing a supplementary application. However, the supplementary application process takes about the same amount of time (nearly a year). For this reason, designating relevant class(es) from the beginning is very important. 

 

To check all the requirements for filing your application for trademark registration, please refer to this link. 

 

          At the same time, you should choose wisely to avoid wasting unnecessary fees for goods and services that you will not use. An expert trademark attorney will offer strategic counseling and analysis of trademark trends, and guide its clients to effectively select and leave out specific elements of their mark to increase the scope of protection in a cost-effective manner. 

 

You can contact our Trademark experts here.