Trademark Applications – 5 Tips to Get it Right

November 29, 2018


As you may have noticed, we’ve been singing the praises and value of trademark protection in a few of our recent blog posts.
Those who have been following will hopefully now (if you didn’t already!) understand exactly what a trademark is and isn’t and the value of trademark protection.  Given the long-term protection they afford, it is really worth getting your trademark registration right and it all starts with the trademark application itself.

trademark infographic

 

 

1.   Should I have legal representation?

We have in the past been asked by several of our clients whether they themselves can make a trademark application directly. Whilst theoretically applicants do not have to be legally represented, it really helps to instruct a trademark expert on your behalf to help you navigate the process. The requirements and terminology are largely unfamiliar to most people without a business legal background and the pitfalls of getting it wrong can be serious.

 

2.  Trademark Registration – Can the mark be registered?

A trademark lawyer can advise on all aspects of the application process. First and foremost is the trademark itself and whether it can even be protected at all. As we explained in our recent blog article, trademarks which fall into certain categories (e.g. non-distinctive or descriptive) will be outright rejected by the trademark office with no refund of fees already paid. Expert business legal advice can help you understand if your mark is protectable and, if not, may even be able to suggest modifications to the mark to help make it registrable.

 

3.  Trademark Checking – Is the mark available?

Running a conflict check is an essential part of any trademark application and involves carrying out thorough searches of the trademark database to ensure the sign is free to use. If a third party already has a trademark for an identical or similar sign in the same field, that will likely be a barrier to your intended use and registration of the mark.

With millions of marks registered, trademark lawyers are trained in the art of using shrewd search criteria to discover problematic existing marks (e.g. not just identical marks but also similar marks, marks starting/ending with or containing a particular term, synonymous marks and even phonetic equivalents). They can also give an informed view on the likelihood of any risk posed by potentially confusingly similar marks and sometimes suggest disclaimer limitations to mitigate this risk.

 

4.  Trademark Classes – What classes should the mark be in?

One of the main benefits of instructing a trademark specialist is to help you choose the correct classes in which to protect your mark. This is based on an internationally agreed system of 45 classes (34 covering goods and 11 covering services) and getting it right can be tricky and confusing if you are not well-versed in the system.
As an example, if you are selling violin cases, that activity belongs in class 15 and you would have to be careful not to protect ‘cases’ under class 9 by mistake, since you would be covered for glasses cases! Solar panels for electricity generation falls under class 9, versus solar panels for use in heating which fall under class 11. The list could go on and on…

We have come across plenty of examples of clients not having been aware of the intricacies of the classification system. One example was an application protected for ‘charitable services’ under class 36. Whilst this would cover charitable activities in the context of collections and fundraising, the client in fact provided temporary charitable accommodation. This is proper to class 43, meaning a complete mismatch between the protection granted by the trademark and the reality of what the client was offering. This essentially made the trademark useless.

 

5.  How to draft the specification?

Finally comes the all-important list/statement of goods and services in relation to which the trademark will be used. Again, the drafting and scope of trademark protection must be accurate and will determine to what extent other parties may use similar/identical marks. It must also be clear and comprehensive. For example, ‘repair services’ would be rejected as being too vague, whereas ‘repair of computer software’ or ‘electric appliance repair’ would be accepted (although note that they would fall into completely different classes, bringing us back around to the point above!).

 

What actions should you take now?

Once trademark applications have been submitted, there is no going back in terms of either amending the mark itself or adding any additional goods/services. For this reason, it is crucial to get it right from the get-go. Here at LawBite we offer very competitive fixed rates to take you from pre-application right through to trademark registration, view our suite of trademark products.  Avoid getting in a pickle with your trademark application and feel free to get in touch for further details today!

To speak to the author of this article, Laura Symons, or to begin the trademark application process please do enter an enquiry or call us today on: 020 7148 1066 and speak to a member of our friendly Client Care Team.

 

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