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.
Your Trademark
Application details
Your proposed trademark application details are as follows:
Your proposed trademark is for samsung.
Your selected goods and services are:
Goods and Services
Class
9
41
42
Mobile phones
Mobile library services
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
SAMSUNG
318353
SAMSUNG
596511
1226240
SAMSUNG DUOS
1251253
SAMSUNG OMNIA
1298125
SAMSUNG
UVENDING
1304240
SAMSUNG
SAVANNA
SAMSUNG PIXON
1306040
Filing
Date
18MAY1978
19FEB1993
26FEB2008
14JUL2008
08MAY2009
12JUN2009
21NOV2008
Goods and Services
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
players; computer network hubs, switches and routers
players; computer network hubs, switches and routers
Vending machines; computers; computer monitors
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
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
SAMSUNG STAR
1314096
SAMSUNG APPS
1341053
1341290
SAMSUNG WAVE
1343881
SAMSUNG MONTE
1344187
SAMSUNG VITA
SAMSUNG SHARK
1349369
1349605
SAMSUNG XCOVER
1350649
SAMSUNG BEAM
1355759
SAMSUNG CHAMP
07AUG2009
10AUG2009
18JAN2010
18JAN2010
03FEB2010
08FEB2010
08MAR2010
08MAR2010
15MAR2010
13APR2010
Mobile phones, smart phones; parts, accessories and fittings in this class
therefor
players; computer network hubs, routers and switches
players; television sets; semiconductors; digital cameras; DVD players
Mobile telephones; smart phones; operating system software for smart
phones
Mobile telephones; headsets for mobile telephones; electric battery
chargers; electric rechargeable batteries
Mobile telephones; smart phones; operating system software for smart
phones; application software for mobile telephones
Mobile telephones and smart phones
Mobile telephones and smart phones; parts and accessories therefor
players
Mobile phones
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
players; portable multimedia player; speakers for use with computers;
compact disc players; unprocessed audio-video compact disc; cathoderay 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.
1366435
SAMSUNG DIVE
11JUN2010
1406240
SAMSUNG STORY
31JAN2011
1458684
HI Samsung
10NOV2011
players; portable multimedia players; audio speakers for computers;
compact disc players; movie projectors; game software, recorded; video
recorders; video disc players
22NOV2011
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
SLIM SAMSUNG LED
1460816
TV
1462117
SAMSUNG S MEMO
M SAMSUNG
SMART
INTERACTION
1467661
1468262
SAMSUNG SMART
CAMERA
29NOV2011
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
29DEC2011
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
03JAN2012
Cameras; camcorders; camera cases; tripods for cameras; lighting
devices for taking pictures; flash lamps for cameras; flash guns for
cameras
1469976
SAMSUNG JOY
16JAN2012
1469977
SAMSUNG FRESH
16JAN2012
SAMSUNG MOBILE
LIVE PIN
1471501
27JAN2012
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
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
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
1472414
SAMSUNG SMART
STATION
1472418
SAMSUNG GALAXY
CAMERA
1475666
SAMSUNG SMART
CAMCORDER
1485452
N SAMSUNG N
SERVICE
1487467
SAMSUNG S VOICE
1493436
SAMSUNG GALAXY
ACE ADVANCE
1499071
SAMSUNG KNOX
SAMSUNG ATIV S
1503764
SAMSUNG ATIV TAB
1503765
1507560
SAMSUNG
KEYSTONE
01FEB2012
01FEB2012
17FEB2012
11APR2012
23APR2012
28MAY2012
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
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
Cameras; camcorders; camera cases; tripods for cameras; lighting
devices for taking pictures; flash lamps for cameras; flash guns for
cameras
Cameras; camcorders; camera cases; tripods for cameras; lighting
devices for taking pictures; flash lamps for cameras; flash guns for
cameras
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
D) eyeglasses; wide area network(WAN) routers
D) eyeglasses; wide area network (WAN) routers
28JUN2012
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
19JUL2012
Mobile telephones; smart phones; tablet computers; notebook
computers
19JUL2012
09AUG2012
Mobile telephones; smart phones; tablet computers; notebook
computers
Mobile phones and telephones
1510224
1519967
SAMSUNG SMART
SCHOOL
SAMSUNG SMART
SERIES
22AUG2012
15OCT2012
SAMSUNG TEC
1521211
TILES
1530643
SAMSUNG XPRESS
1534596
SAMSUNG NET
1540127
Samsung Roz
1545608
SAMSUNG YES
1545611
SAMSUNG SAY
SAMSUNG KNOX
1551469
1558421
Samsung BARAM
1559142
Samsung LOOKE
1559337
Samsung DEWY
18OCT2012
11DEC2012
08JAN2013
11FEB2013
11MAR2013
11MAR2013
12APR2013
22MAY2013
24MAY2013
27-
D) eyeglasses; wide area network (WAN) routers
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
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
D) eyeglasses; wide area network(WAN) routers
Smart phones; tablet PC
D) eyeglasses; wide area network(WAN) routers
D) eyeglasses; wide area network(WAN) routers
D) eyeglasses; wide area network(WAN) routers
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
D) eyeglasses; Wide Area Network (WAN) routers
D) eyeglasses; wide area network(WAN) routers
D) eyeglasses; wide area network(WAN) routers
1560393
SAMSUNG GAIA
MAY2013
31MAY2013
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
17APR1997
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
20JUL2000
Pro-game team management
18JAN2010
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; online electronic publication (read-only) providing services relating to
digital video, audio and multimedia entertainment publishing services;
music library services
10OCT2011
Entertainment services, providing services relating to digital video audio
and multimedia entertainment publishing services, including music
publishing; music library services
SAMSUNG
732559
KHAN SAMSUNG
PRO-GAME TEAM
843292
SAMSUNG APPS
1341053
1452902
SAMSUNG MUSIC
HUB
Goods and Services
1510224
SAMSUNG SMART
SCHOOL
22AUG2012
1527466
SAMSUNG
22-
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
Educational services; on-line electronic publishing of books and
periodicals; electronic library services; correspondence courses;
LEARNING HUB
1540084
SAMSUNG
LEARNING SUITE
NOV2012
11FEB2013
providing information about education; instruction services; courses in
Internet education; arranging and conducting of seminars; providing online electronic publications (not downloadable); tuition; instruction
services; educational research; arranging and conducting of educational
events; education information
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
SAMSUNG
596515
SAMSUNG APPS
1341053
1366435
1485452
SAMSUNG DIVE
N SAMSUNG N
SERVICE
Filing
Date
19FEB1993
18JAN2010
11JUN2010
11APR2012
Goods and Services
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
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
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
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
1507559
Samsung emeeting
09AUG2012
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
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