conversation-intake-trademark-filing

Category: Design Risk: Unknown ★ 3.9 · Rating 3.9/5 (8) sboghossian/mini-claude-for-legal MIT

Rating is derived from the repo's GitHub stars and shown for reference.


name: conversation-intake-trademark-filing
description: Use when a user wants to file a trademark application and Claude must gather the mark description, owner, Nice classification, filing jurisdictions, and clearance status before generating a filing strategy and cost estimate. Triggers on requests to register a brand, logo, name, or trademark nationally or internationally. Covers MENA national filing (UAE, KSA, LB, EG) and Madrid Protocol international designations, with specific handling for Arabic-script marks and GCC-block filings.
license: MIT
metadata:
id: conversation.intake-trademark-filing
category: conversation
practice_area: intellectual-property
jurisdictions: [UAE, KSA, LB, EG, WIPO, GCC, EU, UK, US, multi]
priority: P1
intent: [intake, ip, trademark filing, brand registration, Madrid Protocol]
related: [research-precedent-finder, kb-intellectual-property-mena, conversation-intake-nda, tool-wipo-trademark-search, tool-local-trademark-registers]
source: Louis — HAQQ Legal AI (github.com/sboghossian/mini-claude-for-legal)
version: "1.0"

Intake — Trademark Filing

When this applies

Activate when a user wants to register a trademark, service mark, brand name, logo, or other distinctive sign in one or more jurisdictions. This skill gathers the ten inputs needed to produce a filing strategy, jurisdiction-coverage plan, and cost estimate before routing to the drafting and filing workflow. A clearance search recommendation is always part of the output — filing without clearing is a waste of filing fees.

Behavior

Multi-turn intake (two turns for multi-jurisdiction strategies; one turn for single-country word-mark filings). Extract any information already given. Always recommend a clearance search if one has not been done — do not route to filing without flagging clearance risk.

Required fields

1. Mark description

What is being registered?

Mark type Description needed Notes
Word mark The word(s) in plain text Broadest protection; covers all fonts and colors
Figurative (logo) Visual description + high-quality reproduction (JPEG/PNG, 900×900px minimum) Protect the visual design as filed
Combined (word + logo) Both elements Narrower than separate registrations; sometimes better to file both
Sound mark Audio file + graphic notation (sonogram) Accepted in UAE, EU, US; less commonly in KSA/LB
3D / shape mark 3D rendering + description Higher distinctiveness threshold; must be non-functional
Color mark Pantone reference + specimen of use Requires extensive evidence of distinctiveness through use
Arabic-script mark Arabic text + transliteration + English translation Critical for MENA filings — see jurisdictional notes

2. Owner

  • Full legal name of the trademark owner (not the representative or applicant's lawyer — the registration must be in the name of the legal owner of the brand).
  • Entity type: individual, company, trust, government entity.
  • Nationality and jurisdiction of incorporation / residence.
  • Note: some MENA jurisdictions (KSA) require foreign applicants to designate a local agent; GCC nationals may have reciprocal simplified treatment.

3. Goods and services — Nice Classification

The International Classification of Goods and Services (Nice Classification, currently 12th edition) organizes all goods and services into 45 classes (1–34: goods; 35–45: services). The filing fee is per class in almost every jurisdiction.

Confirm:

  • What goods / services does the brand cover?
  • In which Nice class(es)?

Guidance (common classes for startups / MENA-focused businesses):

  • Class 9: software, mobile apps, AI products, electronic goods
  • Class 35: business services, marketing, retail store services
  • Class 36: financial services, insurance, real estate, fintech
  • Class 38: telecommunications, internet platforms, messaging
  • Class 41: education, training, entertainment, publishing
  • Class 42: SaaS, software development, tech consulting, legal tech
  • Class 45: legal services, personal/social services, security

If the user is unsure of the classes, provide a class recommendation based on the business description. Filing in too narrow a class set leaves the brand exposed; filing in unnecessary classes wastes fees.

4. Countries and filing route

Confirm the target jurisdiction list:

National filings (each country filed separately):

  • UAE: Ministry of Economy Trademark Office (online via moe.gov.ae); trademark register maintained by MoE; renewal every 10 years.
  • KSA: Saudi Authority for Intellectual Property (SAIP); online portal; 10-year registration; Arabic and/or English.
  • Lebanon: Ministry of Economy and Trade — Trademark and Industrial Designs Directorate; French / Arabic; 15-year registration renewable.
  • Egypt: Egyptian Intellectual Property Office (EIPO) under ITIDA; Arabic primary; 10-year registration; renewal for similar periods.
  • EUIPO (EU): single application covers all 27 EU member states; 10-year registration; powerful opposition system.
  • UKIPO: post-Brexit UK-only registration; 10-year; examined on absolute and relative grounds.
  • USPTO: US federal registration; Statement of Use or intent-to-use basis; 10-year renewal (with 5/6-year Section 8 declaration).

Madrid Protocol (WIPO — international route):

  • Single international application via WIPO's Madrid System designates multiple member countries.
  • Based on a home-country basic application or registration.
  • Cost-effective for 5+ country portfolios; standard 18-month examination period per designated country.
  • Key MENA member countries: UAE (member), KSA (member), EG (member), LB (not a member as at 2025 — verify; direct national filing required).
  • Weakness: a successful central attack on the basic application in the first 5 years cancels all international designations ("central attack risk").

GCC Gulf Cooperation Council trademark:

  • GCC Trademark Law (Unified Trademark Law) provides for a single GCC-wide registration covering all 6 GCC member states (UAE, KSA, Bahrain, Kuwait, Oman, Qatar).
  • Filed through any GCC member state's trademark office; administered by GCC General Secretariat.
  • Highly cost-effective for brands operating across the GCC.
  • Note: examine current status of GCC trademark system operability — implementation has been uneven; verify whether the GCC joint registration system is fully operational for the target offices.

5. Prior use

  • Date of first use in commerce (or first use in commerce in each target country, if used in multiple markets).
  • Evidence of use: sales receipts, website screenshots, social media with timestamps, packaging, advertising materials.
  • Prior use affects:
    • US: use-in-commerce basis (Section 1(a)) vs intent-to-use basis (Section 1(b)); use-based filings are stronger.
    • UK / EU: use-based rights (passing-off / prior use defense) can be raised against a later registered mark.
    • LB, KSA, UAE: first-to-file systems — use alone does not create trademark rights; registration is essential. Prior use may help in opposition proceedings but does not substitute for registration.

6. Existing registrations

List any trademark registrations already held:

  • Country, registration number, class(es), registration date, expiry date.
  • Are any registrations at risk of cancellation for non-use? (Most jurisdictions require 3–5 years of use to avoid cancellation; UAE: non-use for 5 consecutive years grounds for cancellation.)
  • Any pending applications or oppositions?

Has a clearance / availability search been done?

  • If yes: what was found? Were any confusingly similar marks identified? Was an FTO (freedom to operate) opinion obtained?
  • If no: strongly recommend conducting one before filing. Filing without clearing risks:
    • Opposition by an earlier right-holder.
    • Infringement claims after commercial launch (potentially more expensive than the search would have cost).
  • Claude can route to [[tool-wipo-trademark-search]] and [[tool-local-trademark-registers]] for preliminary screening, but recommend engaging a local trademark attorney for a formal clearance opinion in each target jurisdiction.

8. Arabic-script handling for MENA filings

For any mark to be used in MENA markets:

  • If the brand is an English or foreign-language word mark, confirm whether an Arabic transliteration or translation will be filed alongside it.
  • Arabic and English versions of a mark should ideally be registered separately AND as a combined mark.
  • KSA: Arabic-language description of the mark is required in the application form; Arabic word marks must be phonetically clear.
  • UAE: bilingual filings (Arabic + English) are common and advisable for broader protection.
  • LB: French and Arabic both accepted; French widely used in commercial filings.
  • Note: phonetic similarity in Arabic can be different from visual similarity — a mark that is visually distinct in Latin script may be phonetically confusingly similar to an existing Arabic mark.

9. Color claim

  • Is the mark being filed in color or in black and white?
  • Black-and-white (grayscale) filing: provides broader protection — the registration covers the mark in any color combination.
  • Color filing: protects only the specific color(s) filed; allows competitors to use the same design in different colors.
  • Best practice for logos: file in black and white for broadest protection; consider filing a color version as a secondary registration if brand identity is strongly color-dependent.
  • Pantone / RAL codes should be specified if a color claim is made.

10. Description of mark

A brief, precise description of the mark as it will appear in the application:

  • For word marks: "The word ACME in standard characters."
  • For figurative / logo marks: "A stylized eagle in profile, with wings spread, colored blue and white, with the word ACME beneath in sans-serif font."
  • Clear descriptions avoid office actions and accelerate examination.

Output

At the end of intake, produce:

  1. A structured intake summary confirming all ten fields.
  2. A filing strategy recommendation: national vs Madrid Protocol vs GCC trademark — with one-paragraph rationale comparing cost, timeline, and coverage.
  3. A clearance search recommendation: confirm whether a search has been done; if not, recommend scope of search (identical and phonetically similar marks; same and adjacent classes).
  4. A cost estimate framework (per-class, per-jurisdiction official fees; note that professional fees vary by agent).
  5. A routing instruction to [[research-precedent-finder]] for clearance context and to the filing workflow.

Jurisdictional notes

Jurisdiction Filing timeline Examination basis Opposition period
UAE (MoE) 18–24 months to registration Absolute + relative grounds 30 days from gazette publication
KSA (SAIP) 12–18 months Absolute + relative grounds 60 days from publication
Lebanon (MoET) 2–4 years (historically slow) Absolute grounds primarily 60 days from gazette publication
Egypt (EIPO) 18–36 months Absolute + relative grounds 60 days from acceptance
EUIPO (EU) 5–7 months if no opposition Absolute grounds (examiner); relative grounds (opposition) 3 months from gazette publication
WIPO Madrid 18 months per designated country National examination by designated office Per national rules
USPTO 12–18 months Absolute + relative grounds 30 days from approval for publication

Do not

  • Route to filing before recommending a clearance search — the cost of a search is trivial compared to the cost of an infringement dispute.
  • File only in English-script for brands that will primarily trade in Arabic-speaking MENA markets — brand protection requires Arabic-language coverage.
  • Assume Madrid Protocol coverage is available for Lebanon until current membership status is confirmed.
  • Recommend a single class filing without reviewing the full scope of the user's commercial activities — under-filing in classes is a common and consequential mistake.
  • [[research-precedent-finder]]
  • [[tool-wipo-trademark-search]]
  • [[tool-local-trademark-registers]]
  • [[kb-intellectual-property-mena]]
  • [[conversation-intake-nda]]
  • [[conversation-uncertainty-language]]