25 June 2013
Dear xxx,
Thank you for your interest in the services of OUR COMPANY and the protection of your brand. My name is NAME and I will personally be looking after your trademark application should you decide to apply for trademark registration.
As such, please find below our initial review of your proposed trademark application.
Application details
Your proposed trademark application details are as follows:
Your proposed trademark is for samsung.
Your selected goods and services are:
Class
|
Goods and Services
|
9
|
Mobile phones
|
41
|
Mobile library services
|
42
|
Design of mobile telephones
| Our recommendations as to your trademark
During examination of your trademark application, the examiner will consider primarily 1) with your trademark conflicts with any earlier trademarks (refer to our search results below), and 2) whether your trademark application is too descriptive of the goods and services for which registration is sought.
OPTION 1 We believe that your trademark application may be considered by the examiner as being too descriptive of the goods and services. Specifically, in the course of trade, the examiner may assert that other traders have a legitimate right to describe their goods and services in this way. If the examiner does raise such an objection, we may be able to overcome the objection by filing evidence of use, however note that such submission of evidence is time-consuming and may not overcome the objection. As such, we therefore recommend the first instance that you consider revising your trademark. Note additionally that you may also decide to apply for a design/logo application in that these applications generally comprise devices being substantially distinctive so as to overcome the examiners reservations as to your trademark’s adaptability to distinguish.
Our recommendations as to your proposed goods and services
Please ensure that the goods and services items you have selected adequately cover your actual or intended use of the trademark. Note that, down the track, others may request certain of your goods and services be removed if you cannot demonstrate actual use of such goods and services.
OPTION 1 We have had a brief look at your website www.example.com and believe you may select the incorrect goods and services. Specifically,...
Search Results
We have performed an initial search of the trademarks registered and have uncovered the following potentially conflicting trademarks.
In class 9 you selected: Mobile phones; Mobile library services; Design of mobile telephones.
Number
|
Trademark
|
Filing Date
|
Goods and Services
|
318353
|
SAMSUNG 
|
18-MAY-1978
|
|
596511
|
SAMSUNG
|
19-FEB-1993
|
All goods in this class including: amplifiers; alkaline batteries; alumina parts for magnetron; automatic vending machines; buzzers; battery chargers; binoculars; cathode ray tubes bulbs; cathode ray tubes; cold cathode fluorescent tube; capacitors; car communication equipment; cameras; cash registers; charge coupled device cameras; color filter for liquid crystal display; computer programs; computer memories; computers; cable T V convertors; deflection coils; cassette tape recorders; compact disk players; digitizers; discharge indicator tube; deflection yoke; dot, ink-jet, or laser printers; electric flat irons; electronic switching systems; electronic view-finder tube; vacuum cleaners in this class; electric measuring devices; electroluminescent display; electron guns; electronic calculators; ferrite core for rotary transformer of video cassette recorder; flat display tube; field emission display; filters for filtering electro-magnetic waves; flash gun; flyback transf
|
1226240
|
SAMSUNG DUOS
|
26-FEB-2008
|
players; computer network hubs, switches and routers
|
1251253
|
SAMSUNG OMNIA
|
14-JUL-2008
|
players; computer network hubs, switches and routers
|
1298125
|
SAMSUNG UVENDING
|
08-MAY-2009
|
Vending machines; computers; computer monitors
|
1304240
|
SAMSUNG SAVANNA
|
12-JUN-2009
|
players; televisions; personal digital assistants (PDAs); notebook computers; DVD players; computer printers; computer monitors; semiconductors; headsets for mobile phones; camcorders; digital cameras; parts and accessories for the aforesaid goods
|
1306040
|
SAMSUNG PIXON 
|
21-NOV-2008
|
players; portable multimedia players (PMP); audio speakers for computer; compact disk players; blank audio-video compact discs; cathode ray tubes; camcorders; video cameras; video projectors; digital cameras; downloadable graphics and music via a global computer network and wireless devices; game software; computer mouse; mouse pads; optical disk drives
|
1313902
|
SAMSUNG WEBTOUCH
|
07-AUG-2009
|
Mobile phones, smart phones; parts, accessories and fittings in this class therefor
|
1314096
|
SAMSUNG STAR 
|
10-AUG-2009
|
players; computer network hubs, routers and switches
|
1341053
|
SAMSUNG APPS 
|
18-JAN-2010
|
players; television sets; semiconductors; digital cameras; DVD players
|
1341290
|
SAMSUNG WAVE
|
18-JAN-2010
|
Mobile telephones; smart phones; operating system software for smart phones
|
1343881
|
SAMSUNG MONTE
|
03-FEB-2010
|
Mobile telephones; headsets for mobile telephones; electric battery chargers; electric rechargeable batteries
|
1344187
|
SAMSUNG VITA
|
08-FEB-2010
|
Mobile telephones; smart phones; operating system software for smart phones; application software for mobile telephones
|
1349369
|
SAMSUNG SHARK 
|
08-MAR-2010
|
Mobile telephones and smart phones
|
1349605
|
SAMSUNG XCOVER
|
08-MAR-2010
|
Mobile telephones and smart phones; parts and accessories therefor
|
1350649
|
SAMSUNG BEAM
|
15-MAR-2010
|
players
|
1355759
|
SAMSUNG CHAMP
|
13-APR-2010
|
Mobile phones
|
1366435
|
SAMSUNG DIVE
|
11-JUN-2010
|
players; portable multimedia player; speakers for use with computers; compact disc players; unprocessed audio-video compact disc; cathode ray tubes (CRT); camcorders; video cameras; projection apparatus; digital cameras; downloadable electric music; downloadable digital images, namely photographic or video images; computer operating and computer application software for mobile phones; game software; computer mouse; mouse pads
|
1406240
|
SAMSUNG STORY
|
31-JAN-2011
|
players; portable multimedia player; speakers for use with computers; compact disc players; unprocessed audio-video compact disc; cathode-ray tubes(CRT); camcorders; video cameras; projection apparatus; digital cameras; downloadable electronic music; downloadable digital images, namely photographic or video images; computer operating and computer application software for mobile phones; game software, recorded; computer mice; computer mouse pads.
|
1458684
|
HI Samsung
|
10-NOV-2011
|
players; portable multimedia players; audio speakers for computers; compact disc players; movie projectors; game software, recorded; video recorders; video disc players
|
1460816
|
SLIM SAMSUNG LED TV 
|
22-NOV-2011
|
players; portable multimedia players; audio speakers for computers; compact disc players; movie projectors; game software, recorded; computer mice; computer mouse pads; video recorders; video disc players
|
1462117
|
SAMSUNG S MEMO
|
29-NOV-2011
|
players; network access server hardware; network access server operating software; PDA (personal digital assistants); portable computers; portable multimedia player; printers for computers; semiconductors; smart phones; software for network management system; stylus for portable electronic devices; switch routers; tablet computer accessories namely batteries, electric battery chargers, data communication cables, wired headsets, wireless headsets, ear phones, car chargers, leathers cases, hands frees, snap-on covers, stylus, audio decks, phone holders, screen protective films, phone straps, faceplates and portable speaker; tablet computer operating system software; tablet computers; telephones; telephones used as terminal devices for Internet protocol (IP) PBX (private branch exchange); television receivers; USB flash memory; wireless headsets; chargers for cellular phones; rechargers for cellular phones; headsets for cellular phones; cases for cellular phones
|
1467661
|
M SAMSUNG SMART INTERACTION 
|
29-DEC-2011
|
players; portable multimedia players; audio speakers for computers; compact disc players; movie projectors; game software, recorded; computer mice; computer mouse pads; video recorders; video disc players
|
1468262
|
SAMSUNG SMART CAMERA
|
03-JAN-2012
|
Cameras; camcorders; camera cases; tripods for cameras; lighting devices for taking pictures; flash lamps for cameras; flash guns for cameras
|
1469976
|
SAMSUNG JOY
|
16-JAN-2012
|
players; network access server hardware; network access server operating software; PDAs (Personal Digital Assistants); portable computers; portable multimedia players; printers for computers; semiconductors; smart phones; software for network management system; stylus for portable electronic devices; tablet computer accessories namely batteries, electric battery chargers, data communication cables, headsets, ear phones, car chargers, leathers cases; hands frees, snap-on covers, stylus, audio decks, tablet holders, screen protective films, tablet straps, faceplates and portable speakers; tablet computer operating system software; tablet computers; telephones; telephones used as terminal devices for Internet protocol (IP) PBX (private branch exchange); television receivers; USB flash memory; wireless headsets
|
1469977
|
SAMSUNG FRESH
|
16-JAN-2012
|
players; network access server hardware; network access server operating software; PDAs (Personal Digital Assistants); portable computers; portable multimedia players; printers for computers; semiconductors; smart phones; software for network management system; stylus for portable electronic devices; tablet computer accessories namely batteries, electric battery chargers, data communication cables, headsets, ear phones, car chargers, leathers cases; hands frees, snap-on covers, stylus, audio decks, tablet holders, screen protective films, tablet straps, faceplates and portable speakers; tablet computer operating system software; tablet computers; telephones; telephones used as terminal devices for Internet protocol (IP) PBX (private branch exchange); television receivers; USB flash memory; wireless headsets
|
1471501
|
SAMSUNG MOBILE LIVE PIN 
|
27-JAN-2012
|
players; network access server hardware; network access server operating software; PDA (personal digital assistants); portable computers; portable multimedia player; printers for computers; semiconductors; smart phones; software for network management system; stylus for portable electronic devices; switch routers; tablet computer accessories namely batteries, electric battery chargers, data communication cables, wired headsets, wireless headsets, ear phones, car chargers, leathers cases, hands frees, snap-on covers, stylus, audio decks, phone holders, screen protective films, phone straps, faceplates and portable speakers; tablet computer operating system software; tablet computers; telephones; telephones used as terminal devices for Internet protocol (IP) PBX (private branch exchange); television receivers; USB flash memory; wide area network (WAN) routers; wireless headsets
|
1472414
|
SAMSUNG SMART STATION
|
01-FEB-2012
|
players; portable multimedia players; audio speakers for computers; compact disc players; movie projectors; computer game software; computer mouse; computer mouse pads; video recorders; video disc players; cell phone cases; pocket calculators; camcorders; cameras; tablet computers; video cameras; earphones; integrated circuits; electronic photocopiers; headsets for use with computers; recorded computer software
|
1472418
|
SAMSUNG GALAXY CAMERA
|
01-FEB-2012
|
Cameras; camcorders; camera cases; tripods for cameras; lighting devices for taking pictures; flash lamps for cameras; flash guns for cameras
|
1475666
|
SAMSUNG SMART CAMCORDER
|
17-FEB-2012
|
Cameras; camcorders; camera cases; tripods for cameras; lighting devices for taking pictures; flash lamps for cameras; flash guns for cameras
|
1485452
|
N SAMSUNG N SERVICE 
|
11-APR-2012
|
players; television sets; semiconductors; digital cameras; DVD players; mobile phones; smart phones; video cameras; battery chargers; camcorders; computer monitors; computer printers; electronic calculators; photocopiers; glasses; cash registers; electric batteries; fibre optic cables; electric audio and visual apparatus and instruments; cases for mobile phones; devices for hands-free use of mobile phones; personal digital assistants; tablet computers; mouse; pre-recorded electronic media of music; pre- recorded electronic media of non-music; downloadable electronic publications
|
1487467
|
SAMSUNG S VOICE
|
23-APR-2012
|
D) eyeglasses; wide area network(WAN) routers
|
1493436
|
SAMSUNG GALAXY ACE ADVANCE
|
28-MAY-2012
|
D) eyeglasses; wide area network (WAN) routers
|
1499071
|
SAMSUNG KNOX
|
28-JUN-2012
|
Security platform software programs, downloadable and preloaded computer security software, downloadable and preloaded smartphone security software, downloadable and preloaded tablet PC security software, computer hardware and software for providing secure remote access to computer and communication networks, smartphone hardware and software for providing secure remote access to smartphone and communication networks, tablet PC hardware and software for providing secure remote access to tablet PC and communication networks
|
1503764
|
SAMSUNG ATIV S 
|
19-JUL-2012
|
Mobile telephones; smart phones; tablet computers; notebook computers
|
1503765
|
SAMSUNG ATIV TAB 
|
19-JUL-2012
|
Mobile telephones; smart phones; tablet computers; notebook computers
|
1507560
|
SAMSUNG KEYSTONE
|
09-AUG-2012
|
Mobile phones and telephones
|
1510224
|
SAMSUNG SMART SCHOOL
|
22-AUG-2012
|
D) eyeglasses; wide area network (WAN) routers
|
1519967
|
SAMSUNG SMART SERIES
|
15-OCT-2012
|
LCD digital display screens, computer screens, television apparatus and television screens, flat screen display apparatus, all for use upon refrigerators; computer software that allows users to access the Internet or a global computer network via 'smart' refrigerators; computer software applications; computer software to enable users to program and distribute audio, video, text and other multimedia content via a communication network; communication software for use with, and to allow the exchange of data, graphics and text between, mobile phones, portable computers and 'smart' refrigerators; network access server hardware; network access server operating software; computer hardware and peripherals used in 'smart' refrigerators, including wireless local area networking products
|
1521211
|
SAMSUNG TEC TILES 
|
18-OCT-2012
|
Near field communication (NFC) technology-enabled readers; near field communication (NFC) technology-enabled devices, namely, mobile phones and smart phones; radio frequency identification (RFID) tags; computer application software for wireless devices, namely, software for scanning barcodes, nearfield communication (NFC) tags, and RFID tags from wireless devices; computer application software for wireless devices used to manage near field communication technology features on those devices
|
1530643
|
SAMSUNG XPRESS
|
11-DEC-2012
|
D) eyeglasses; wide area network(WAN) routers
|
1534596
|
SAMSUNG NET
|
08-JAN-2013
|
Smart phones; tablet PC
|
1540127
|
Samsung Roz
|
11-FEB-2013
|
D) eyeglasses; wide area network(WAN) routers
|
1545608
|
SAMSUNG YES
|
11-MAR-2013
|
D) eyeglasses; wide area network(WAN) routers
|
1545611
|
SAMSUNG SAY
|
11-MAR-2013
|
D) eyeglasses; wide area network(WAN) routers
|
1551469
|
SAMSUNG KNOX 
|
12-APR-2013
|
Security platform software programs, downloadable and preloaded computer security software, downloadable and preloaded smartphone security software, downloadable and preloaded tablet PC security software, computer hardware and software for providing secure remote access to computer and communication networks, smartphone hardware and software for providing secure remote access to smartphone and communication networks, tablet PC hardware and software for providing secure remote access to tablet PC and communication networks
|
1558421
|
Samsung BARAM
|
22-MAY-2013
|
D) eyeglasses; Wide Area Network (WAN) routers
|
1559142
|
Samsung LOOKE
|
24-MAY-2013
|
D) eyeglasses; wide area network(WAN) routers
|
1559337
|
Samsung DEWY
|
27-MAY-2013
|
D) eyeglasses; wide area network(WAN) routers
|
1560393
|
SAMSUNG GAIA
|
31-MAY-2013
|
Smart phones; mobile telephones; tablet computers; computers; notebook computers; digital cameras; software for mobile devices
|
Potentially conflicting trademarks in Class 41
In class 41 you selected: Mobile phones; Mobile library services; Design of mobile telephones.
Number
|
Trademark
|
Filing Date
|
Goods and Services
|
732559
|
SAMSUNG 
|
17-APR-1997
|
Entertainment; sporting and cultural activities including amusement parks; computer education training services; correspondence courses; country club services; education in the field of design; fashion shows; gymnasiums; movie theatres; production and distribution of motion picture; production of radio and television programs; publication of books and magazines; record production; rental of sports equipment (except vehicles); rental of stage scenery; zoological gardens
|
843292
|
KHAN SAMSUNG PRO-GAME TEAM 
|
20-JUL-2000
|
Pro-game team management
|
1341053
|
SAMSUNG APPS
|
18-JAN-2010
|
Entertainment services, namely, providing online computer games services provided from local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks; entertainment services, namely, to enable users to program audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs through a web site or via a global computer network; information relating to music entertainment, education, interactive entertainment and education, provided on-line from local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks; on-line electronic publication (read-only) providing services relating to digital video, audio and multimedia entertainment publishing services; music library services
|
1452902
|
SAMSUNG MUSIC HUB
|
10-OCT-2011
|
Entertainment services, providing services relating to digital video audio and multimedia entertainment publishing services, including music publishing; music library services
|
1510224
|
SAMSUNG SMART SCHOOL
|
22-AUG-2012
|
Arranging and conducting of seminars; publication of texts other than publicity texts; publication of education materials; publication of books; providing on-line electronic publications (not downloadable); publication of periodicals; publication of electronic books and journals on-line; lending libraries; production of radio and television programs; tuition; instruction services; educational examination; educational research; arranging and conducting of educational events; education information; courses in Internet education; Internet education instruction; educational examination via Internet; correspondence courses; language instruction; instruction of social services; on-line educational examination
|
1527466
|
SAMSUNG LEARNING HUB
|
22-NOV-2012
|
Educational services; on-line electronic publishing of books and periodicals; electronic library services; correspondence courses; providing information about education; instruction services; courses in Internet education; arranging and conducting of seminars; providing on-line electronic publications (not downloadable); tuition; instruction services; educational research; arranging and conducting of educational events; education information
|
1540084
|
SAMSUNG LEARNING SUITE
|
11-FEB-2013
|
Arranging and conducting of seminars; publication of texts other than publicity texts; publication of education materials; publication of books; providing on-line electronic publications (not downloadable); publication of periodicals; publication of electronic books and journals on-line; lending libraries; production of radio and television programs; tuition; instruction services; educational examination; educational research; arranging and conducting of educational events; education information; courses in Internet education; Internet education instruction; educational examination via Internet; Correspondence courses; language instruction; instruction of social services; on-line educational examination
|
Potentially conflicting trademarks in Class 42
In class 42 you selected: Mobile phones; Mobile library services; Design of mobile telephones.
Number
|
Trademark
|
Filing Date
|
Goods and Services
|
596515
|
SAMSUNG
|
19-FEB-1993
|
Class: 42 Architecture; copyright management; electrical equipment rental; engineering and drawing of aircraft; legal research; optician's services; patent exploitation; intellectual property assistance and consultancy; rental of robot (machine); surveying
|
1341053
|
SAMSUNG APPS
|
18-JAN-2010
|
players; maintenance, repair and updating of computer software, computer operating system software, computer utility software; providing information concerning computer software via the Internet and other computer and electronic communication networks; providing consulting services and technical troubleshooting support for computer software and for handheld mobile digital electronic devices and other consumer electronics; computer hardware and software consulting services; multimedia and audio-visual software consulting services; computer programming; support and consultation services for developing computer systems and databases; information relating to computer hardware or software provided on-line from a global computer network or the Internet; creating and maintaining web-sites; design and development of web-sites featuring multimedia materials; hosting the web-sites of others; internet services, namely, creating indexes of information, sites and other resources available on global computer networks for o
|
1366435
|
SAMSUNG DIVE
|
11-JUN-2010
|
Providing web based software for smart phones; development of data processing programs; web site management; web site maintenance; hosting web site; rental of computer software; design of computer software; maintenance of computer software; updating of computer software; development of computer programs
|
1485452
|
N SAMSUNG N SERVICE
|
11-APR-2012
|
players; maintenance, repair and updating of computer software, computer operating system software and computer utility software; providing information concerning computer software via the Internet and other computer and electronic communication networks; providing consulting services and technical troubleshooting support for computer software and for handheld mobile digital electronic devices and other consumer electronics; computer hardware and software consulting services; multimedia and audio-visual software consulting services; computer programming; support and consultation services for developing computer systems and databases; information relating to computer hardware or software provided on-line from a global computer network or the Internet; creating and maintaining web-sites; design and development of web- sites featuring multimedia materials; hosting the web- sites of others; information, advisory and consultancy services relating to all the aforesaid; designing, developing and hosting a website, v
|
1507559
|
Samsung e-meeting
|
09-AUG-2012
|
players; maintenance, repair and updating of computer software, computer operating system software and computer utility software; providing information concerning computer software via the Internet and other computer and electronic communication networks; providing consulting services and technical troubleshooting support for computer software and for handheld mobile digital electronic devices and other consumer electronics; computer hardware and software consulting services; multimedia and audio-visual software consulting services; computer programming; support and consultation services for developing computer systems and databases; information relating to computer hardware or software provided online from a global computer network or the Internet; creating and maintaining web sites; design and development of web sites featuring multimedia materials; hosting the websites of others; information, advisory and consultancy services relating to all the aforesaid; providing a web site, via a global computer networ
|
OPTION 1 Of particular concern is trademark XXX, which we believe is substantially identical to your proposed trademark application. Note however that you may still be able to obtain trademark protection in certain circumstances. Specifically, this trademark appears to have been filed on XXX. As such, we may be able to obtain registration of your trademark application by showing your use of the trademark prior to the state. Alternatively, we may be able to obtain a letter of consent from the owner(s) for your registration of your trademark application.
Please note that the above search results are initial search results only and may not therefore be exhaustive. OPTION 2 As such, we therefore recommend we conduct a professional trademark search prior to filing of your trademark application to identify potentially conflicting trademarks. During the search, we will utilise search terms to uncover those trademarks which may be considered by the examiner is being substantially identical or deceptively similar to your trademark application including by utilising search turns comprising spelling variations, phonetic equivalents and the like.
Next Steps
As such, in light of the above, we recommend...
For your consideration, the costs for these recommendations and for the filing of your trademark application are as follows:
Option
|
Cost
|
Application cost per class
|
$ 500
|
Govt. fee per class
|
$ 325
|
Option 1
|
$ 1112
|
Options 2
|
$ 200
|
Please consider our recommendations, and of course please let us know if you wish to discuss any aspect in further detail. Once you are satisfied with your application, please usethis link to resume your application
Yours sincerely
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