Trade marks attorney Alicia Beverley can assist your practice by helping your clients either directly or as a white label service (behind the scenes) with their trade mark searches, filings, and prosecution of applications through to registered status. Contact Alicia today and connect with her on LinkedIn.
Responding to Examiner’s Reports
If you have filed trade mark applications on behalf of a client that has been issued an adverse report from an examiner, Alicia has the specialist skills to:
- provide advice to you and your client about how to overcome the examiner’s objections
- provide a costing for any recommended formal response
- prepare correspondence arguing in support of the application (often appropriate for section 41 objections)
- prepare comprehensive statutory declarations with multiple exhibits asserting ‘honest concurrent’ (section 44(3)) or ‘prior use’ (section 44(4)).
Alicia has an excellent track record for moving pending trade mark applications to accepted status; click here for examiners report case studies. Our article, ‘Accountants: Filing Trade Marks for Your Clients is Not a Good Idea. Here’s Why’ gives four reasons why this diversification is not recommended.
Professional Trade Mark Searches
Potential new trade marks should be professionally searched by a trade marks attorney. Alicia Beverley has over 15 years in conducting comprehensive searches of common law databases and the Official Trade Marks Register. Her search results will either confirm that a chosen trade mark is eligible for acceptance with regard to the Trade Marks Act 1995 (Cth) or should not be filed as the likelihood of objections is high.
Strategic Trade Mark Filings
Once Alicia’s trade mark searches indicate that the chosen brand has a high likelihood of acceptance, she can then move immediately to file strategic trade mark applications to start the protection process. It takes a minimum of 7 1/2 months for straight-forward filings to achieve registration, but generally 9-12 months is common if a longstanding trade mark is being applied for and other previously registered marks could result in examiner objections, which will require formal responses to the examiner. However, as part of Alicia’s search report, she can lay out a post-filing strategy for overcoming objections, which can also be costed from the outset.