Filing in Israel is a smart undertaking due to the fact that Israel historically, is one of the top 25 U.S. trading partners. The protection of intellectual property rights is a top priority for many U.S. companies already operating or selling in Israel due to the minimum of barriers to trade and its large English-speaking population. Israel can also be considered a gateway to other countries due to its diverse population and advanced high technologies.

The following is a simplified outline setting forth the basics of filing for a trademark in Israel, the U.S, and many other countries that adhere to the same International treaties governing intellectual property. Please note that this article should not be relied upon in place of legal counsel.

Without the details of treaty agreements, it is sufficient to know that the process for filing a trademark application in Israel is very similar to that in the U. S. Most applicants seek representation by a local intellectual property lawyer for detailed legal advice and to have a local contact address on the application for service of process. Finding a U.S. law firm with an existing arrangement with a law firm in Israel is the least expensive way to find the right representative.

Costs for filing a single class trademark application vary, but can range up to $3,000 for a smooth filing with few obstacles to publication and registration. Your U.S.-based attorney in conjunction with Israeli counsel can give you a clearer idea of the costs associated with your particular trademark. To minimize your costs, be prepared to answer some specific questions. For starters, have in mind the range of products or services you wish to use the trademark with and a good idea of what you want the trademark to look like. If you already have a trademark that is already registered somewhere you will need to provide a copy of the originally filed application to your lawyer. If you already use the trademark but have not filed for registration, know the date of the first sale. In addition, if there is a design element to your mark, have the image on a transferable medium, such as a computer disk.

KEEPING YOUR COSTS LOW

Most important to cutting costs is to have some idea whether you are the only user of the proposed trademark. In fact, the most common but easily avoidable legal obstacle is when someone else has previously filed for, or holds, a registration to the same mark as yours for the same or similar goods or services. To aid your attorney you can easily conduct what is called a "common law" search by searching the websites of both the Israeli Trademark Office and U. S. Patent and Trademark Office, searching the Internet, checking phone books, trade journals, and other industry or product-related sources. Tell your attorney of any findings and be prepared to assist in the further investigation of these potentially similar marks.

THE PROCESS

The trademark application process begins by filing with the Israeli Trademark Office, either online, via the mail, or in person at the Office in Jerusalem. The process is called "prosecuting a trademark" and entails communication between the trademark authority and your representatives. An examiner then reviews the application. Once the examiner finds that the application has no defects, or all defects have been properly addressed, the application is passed to publication. It is rare for a trademark application to have no defects. If defects are found, the examiner issues an official report or "action" to the attorney of record detailing the defects and statutory deadline for response. In Israel and the U.S. when the corrective actions are not sufficient and rejection by the examiner is made final, only an appeal will get the mark reviewed again.

However, if all defects are resolved then the application is passed to publication, which can take several months. "Publication" is when the mark is published in the official trademark reporter allowing for the public to submit comments or oppositions. If comments concerning your mark are received, they are considered before the mark can continue. If the mark passes publication unscathed, it will move on to registration.

Once registered, the mark can be safely identified as registered by using the registration symbol or the "®," as a superscript to your mark. This demarcation gives notice to the world that you are rightfully using the word, phrase or design, etc. as a lawful trademark for the goods or services to which it is attached.

INFORMATION

Portions of this article were originally published in Export America, a magazine published by the International Trade Administration of the U.S. Department of Commerce (www.ita.doc.gov).