What to avoid when trade marking your brand

A trade mark can be invaluable in protecting your brand and the products or services that it markets.

Without trade mark protection you may find that competitors use your logos, patterns or business name without your permission and benefit commercially from it.

When applying for a trade mark, your application must be submitted correctly and should sufficiently protect your brand now and in the future.

To help you avoid some of the common pitfalls of applying for a trade mark, our experienced trade mark team have outlined some basic points to consider.

Avoid generic 

Attempting to brand a product with a generic word or pattern that is non-distinctive may not hold up in court and could be challenged. The more the word or device you choose describes your goods or services the harder it will be to register and enforce.

Research, research, research

Just because you have come up with a distinctive name do not assume that no one else hasn’t used it previously. If another person has registered the trade mark and it has been in use within the last few years, then you may struggle or find it impossible to register a similar trade mark, particularly if it applies to a similarly classed product or service. You should do this early in the life of your business before you invest in branding and marketing to avoid any unnecessary costs.

Trade mark ownership

It’s important that you establish whose name the trade mark is under. Any ambiguity could lead to a dispute over who gets paid if a brand, or trademark, is sold or licensed in future. Make sure that ownership is aligned with the aims of the business and the people within it.

Don’t ignore application correspondence

The Intellectual Property Office (IPO) will contact you if they find that there is an issue with your trademark application. You must respond to this quickly because if you don’t your application could be declared void. It is best to seek immediate professional advice if you are unsure of the nature or details of the correspondence.

Mind your P’s and Q’s

There are legal restrictions that exist regarding the use of offensive words that could see your trademark application rejected. Be sure to check with the IPO or a professional adviser whether the words you intend to use are deemed offensive.

Back to class

Trade marks are categorised by product or service, of which there are 45 separate classes. This means that is possible to have a company or product name registered in one class and an identical company or product name registered by another company in a separate class. Do not assume that just because you are protected under some classes, that your brand is protected under all classes.

Remember, you can only enforce a trade mark if the services or products of the party can be related to yours in such a way that they may confuse the public.

Descriptive names

The UK IPO, and many overseas IPOs do not accept descriptive marks, as this would provide the trademark owner with an unfair monopoly in a word. Try and choose a distinctive word.

Seek help

The best advice that any professional can offer is to seek help. Trade mark rules can be deceptively complex and failing to get it right may mean that your product or service is not properly protected or may lead to you infringing on the rights of another trade mark owner.

Speaking with a dedicated trade mark attorney you can save time, money and most importantly the stress of getting it wrong. To find out how our experienced trade mark attorney Andrew Murch can help you, please contact us.