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An Office Action Response is an answer to a refusal of an US trademark application. If the United States Patent and Trademark Office

Office Action Response to Simple Refusal

Simple Office Action Response, such as:

– Agreement to a disclaimer request
– Amendment of the identification of goods/services in an application
– Amendment of acquired distinctiveness based solely on a claim of 5 years of use
– Change/addition of an international class (+fees for any additional class(es))
– Claims of other registrations or applications owned by the applicant
– Submission of a substitute specimen

Office Action Response to Medium Refusal

Moderate Office Action Response, such as:

– Amendment to allege use
(+ additional fees)
– Refusal on the basis of ornamentation
– Refusal on the ground that the subject matter appears to be the title of a single creative work
– Requests for information requiring limited research regarding the customer’s business

Office Action Response to Complex Refusal
– Refusal on the basis of descriptiveness, genericness, mistake, misdescriptiveness, geographic significance, surname, or other substantive objections (excluding likelihood of confusion)
– Assertion of acquired distinctiveness with arguments/evidence
– Submission of arguments against a disclaimer request

Office Action Response to Likelihood of Confusion Refusal

Likelihood of Confusion Office Action Response, such as:

– One cited mark: $799
– Each additional cited mark: $99

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Trademark registration in Brazil can only be obtained through trademark registration with the Brazilian Institute for Industrial Property (Instituto Nacional da Propriedade Industrial; INPI). Registration is essential, if you do not register your rights, you might not be able to enforce them.

If the applicant is not domiciled or has no establishment in Brazil, he is obliged to appoint a representative as his authorized agent (Law No. 9.279/1996 Lei da Propriedade Industrial; LPI).

Official fees

Trademark registraion in Brazil is not expensive in terms of Official fees. The INPI currently charges an application fee (official fee filing) of R$ 355 (online application using the list of products/services furnished by the INPI), R$ 415 (online application with free specification of the list of products/services) or R$ 475 (paper based application) respectively for each application filed. This fee is due at the moment of filing.

At the time of trademark registration, payment of an additional (trademark registration) fee in the amount of R$ 745 becomes due (irrespective of whether the application has been filed on line or in the paper based form). The aforementioned fees apply when the applicant is a legal person (Brazilian or foreign). Reduced rates pertain to natural persons, small enterprises (according to Brazilian law), and a number of other special cases.

The schedule of official fees (August 2014) provides for a trademark filing and a trademark registration fee:

• trademark filing fee: R$ 415 (R$355 if in conformity with INPI’s list of goods & services)
• trademark registration fee: R$ 745

A 60% reduced fee applys to

• individual applicants (natural persons),
• small entities (subject to approval of INPI, documents evidencing status need to be filed),
• Universities;
• Government public organs; and
• Nonprofit organizations

Claim of Priority – Necessity to file a national Brazil trademark application

Brazil is not a member of the Madrid System and has not ratified the Madrid Protocol. Thus, it is only possible to protect your trademark rights at national level, an International Registration designating Brazil is not available. However, Brazil is member of the Paris Convention. Thus, applicant’s can rely on Art. 4 of the Convention in order to invoke their right of priority of an earlier foreign trademark when filing for trademark registration in Brazil.

INPI Trademark Examination – What can be registered?

The system operates in a similar way to that of Europe. Shapes, symbols, colors, domain names and other devices used to identify a company’s products and services can be registered as trademark registration in Brazil. As part of the registration process INPI performs a detailed examination of the application in regard to registrability (absolute grounds) and confusing similarity with prior registrations (relative grounds – ex ofico).

• Generic terms,
• geographical names and
• non distinctive marks will not be registered.

Geographical indications receive protection in Brazil, as required by the Paris Convention by way of a formal registration system.

As INPI also searches the register for possible conflicts with trademark registrations in Brazil, it is wise to to perform a thorough trademark search before filing a trademark application in Brazil. Our Brazil trademark filing package includes a trademark search before filing. Should our search reveal conflicting trademarks, we will only charge for the trademark search.

Trademark registration in accordance with Nice Classification

Although, Brazil has not ratified the Nice Agreement, INPI  nevertheless follows the current 10th International Classification of goods and services. The classification in Brazil is, however, peculiar.

First, INPI publishes its own list of accepted goods and services which conform to the Nice Classification. A trademark filing which does list goods and services which do not conform to the list of accepted goods, but which would generally fall under the same classification are charged a surcahrge fee (instead of R$355, R$415).

Secondly, INPI does not accept a reference to a given class or its heading. The application needs to specify the particular goods and/or services which are sought to be protect under the respective mark.

Lastly, Brazil does not accept multi-class trademark applications. For every class of goods and services a separate trademark application needs to be filed.

Prerequisite to filing – Use of Trademark registration in Brazil or Anywhere

As part of the trademark filing, the applicant declares that he uses the trademark for the goods and/or services for which trademark protection is sought. This is done by filing an affidavit (declaração de atividades) together with the trademark application. The trademark use must not necessarily be within the Brazlian territory, but may as well be outside of the country.

Trademark registration- consecutive 10 year periods

From the date of registration trademark protection is granted for a period of ten years. The trademark term may be renewed for consecutive 10 year periods (Art. 133 LPI).

Trademark Process: From application to trademark registration in Brazil

After application for trademark registration in Brazil has been filed, INPI will conduct a basic assessment of (formal) completeness. The trademark application will be published in the INPI’s official bulletin (Revista Propriedade Industrial; RPI) only if the minimum legal requirements are met. The publication will start the 60-day opposition period (Art. 158 LPI). If no opposition is filed, INPI will launch a detailed examination of the application and decides whether it is registrable as trademark registration in Brazil. The examination also includes prior trademark registrations in Brazil. For this reason, it is wise to perform a clearance trademark search for confusingly similar trademarks.

INPI does not communicate with the applicant in case the trademark is refused registation. The change of the application’s current status, request for payment of additional fees or further documents are published by INPI in the weekly RPI. Thus, the weekly bulletin must be checked on a regular basis.

Length of trademark registration in Brazil

Our experience shows that on average a trademark registration in Brazil takes two to three years from the date of filing to its registration. Due to the introduction of the online filing system and further employment of trademark examiners by INPI the examination period has greatly shortened. Although trademark registration in Brazil can currently only be obtained through national trademark filing, INPI drives to be more accessible. It is thus intended to shorten the trademark registration in Brazil to an average period of 18 months (from application to registration). This is the necessary period of time for accession to the Madrid Protocol.

It must be noted, that the applicant already has wide trademark protection even though the trademark is not registered as trademark registration in Brazil. The protection is accorded by Art. 130 III LPI.

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