As trademark attorneys, we often have enquiries from people who are launching a business and want to register a business or product name, but are on such a tight budget that even a couple of hundred pounds spent on a trademark attorney is too much.
If you can afford a trademark attorney we highly recommend you use one, as there are various pitfalls and complications at all stages of seeking trademark protection that a trademark attorney will be able to help you avoid.
However, the benefits of registering a name or logo as a trademark can be so significant that we don’t like to see anyone miss out, so we’ve decided to write this guide to help people that really just cannot afford a trademark attorney.
First Steps
There are two main classes of trademark applicant. Those that have started use of their mark and those that have not. In some respects if you haven’t yet started use of your mark you are in a better position than someone who has, as you should be able to more easily change the mark if it turns out that it is not free for use.
If you have started using your mark and you want to register your mark then we would urge you to have a professional trademark clearance search performed before filing an application. The reason for this is that you might be unwittingly infringing someone else’s registered trademark, and if you file a trademark application your infringing use could be brought to their attention.
So, presuming you’re not yet using the mark what can you do to find out if your chosen mark is free for use?
Firstly, decide what goods/services you want to use the mark in respect of, as a trademark must be registered for specified goods/services. For a guide to trademark classification please visit the following link:
http://www.ipo.gov.uk/t-class-guide.htm
Then do a search on the internet to find out if anyone else is using the mark for the goods/services of interest to you.
If you don’t find anyone using the mark in the UK, but you find someone using the mark in another country, ask yourself if you are ever likely to want to trade in that country. If not then their use may not be a problem, as trademark rights are largely territorial. Exceptions to this include ‘well known marks’, which can be enforced in a country even if they are not registered there.
If you do find someone using in the UK an identical/similar mark for identical/similar goods or services then their use might pose a problem as they may be able to assert common law ‘passing-off’ rights in the mark. If you are intent on using the mark then we would recommend you consult a trademark attorney for advice. If you are not intent on using it then we would suggest you choose a different mark.
If the mark you want to register is also going to be your business name and you’re going to want a website www.yourbusinessname.co.uk then at this stage we’d suggest you do a domain name search to check that it’s free using one of the many free online search resources.
Presuming that through your internet search you don’t find anyone using an identical/similar mark in the UK for identical/similar goods or services then it’s time to search the UK and Community trademark registers.
UK & Community Trademark Search
The UK Intellectual Property Office has a free search engine of both UK and Community trademarks, which can be accessed here:
What are you searching for?
A registered trademark can give the owner the right to use in the UK an identical/similar mark for identical/similar goods/services. So type the mark you want to register into the search engine, click search and see if there are any identical marks that come up.
If there are any identical marks, and these marks are currently registered for goods/services identical/similar to the ones you want to cover then these marks could be problematic. There may be things that you could do to get round these registrations, such as asking for a letter of consent or applying to revoke the marks if they are older than 5 years old, however, these are outside the scope of this article. We’d suggest you either seek professional advice or choose a different mark.
If there aren’t any identical marks do searches for similar marks. What is similar is a complex question, but in general you need to look out for phonetic, visual and conceptual similarity, so try searching for parts of the word(s) making up your mark and for phonetic equivalents.
When you compare the marks you find with your mark, ask the question ‘is there any possibility that someone might be confused between the two?’ If you think there is a possibility of confusion then see if the goods/services covered by the mark are identical/similar to those of interest to you. If they are identical or similar then the mark could be problematic and we’d suggest you either seek professional advice or choose a different mark.
At this stage you’re going to have to accept that you’re never going to be able to do a perfect clearance search without employing a trademark attorney.
Luckily, if you’re not yet using the mark and are open to choosing a different mark then you don’t have to do a definitive search, as the UKIPO will do a search as part of the application process.
Once you’ve done enough searching to satisfy yourself that there are no obviously problematic marks then it’s nearly time to file a trademark application.
There’s just one more question that needs to be asked. Is your mark inherently registrable as a trademark?
Inherent Registrability
This subject demands an article for itself. However, the most common objections are that the mark is not distinctive or is descriptive of the goods/services for which it is registered.
The best free source of information on inherent registrability is the manual of trademark practice issued by the UKIPO:
http://www.ipo.gov.uk/tmmanual-chap3-exam.pdf
We’d suggest you take a read through this and try to make a decision as to whether or not your mark is inherently registrable.
The reason we didn’t flag up this issue before the clearance search is because if someone uses a mark for long enough they can turn what was an inherently unregistrable mark into a registrable mark by ‘distinctiveness acquired through use’. This means that marks you wouldn’t expect to find registered sometimes can be registered, and if you’re considering using a mark that is inherently unregistrable you can’t be sure it isn’t registered without a search.
Filing a Trademark Application
Filing a trademark application is actually quite easy. You need to get three main things correct:
1. The mark. You can’t change the mark once you’ve filed the application, so make sure you get it correct. If the mark is a word or words then if you write the mark all in uppercase the mark will be considered to cover any style of writing the word(s).
2. The specification of goods/services. You can’t broaden of the specification of goods/services after filing the application, so make sure you want to put everything in that you want to cover. Talk to the UKIPO on 0300 300 2000; they’re very helpful. Also use the UKIPO’s classification guide to try to help you:
http://www.ipo.gov.uk/types/tm/t-os/t-find-class.htm
3. The name and address of the applicant. Although you can correct this after filing it’s easier if you get this right at the outset. Are you filing the application in the name of your company (it needs to have a legal personality such as a limited company) or in your name? Again, the UKIPO will be able to help if you’re in any doubt.
You can file a trademark application online or by post/fax. Because you haven’t had a professional clearance search done we’d suggest you might wish to file what’s called a ‘RightStart’ application. This means that for a one-class application you pay £100 up front, and then have to pay a further £100 within two weeks of being sent the official examination report. Thus, if the examination report shows a lot of problematic marks you could choose not to pay the further £100, abandon the application, and choose a different mark.
The alternative, if you file a one-class application online, is to pay £170 upfront (you get a £30 discount that you don’t get with a RightStart application).
A link to the UKIPO online trademark filing service can be found here:
http://www.ipo.gov.uk/types/tm/t-os/t-os-forms/tm3-introduction.htm
The Examination Report
When the examination report is issued (within around two weeks) it will either say there are no conflicting marks and the application is to proceed to publication, or it will list all the UK and Community trademark registrations/applications that the Examiner thinks are identical or confusingly similar and cover identical/similar goods/services. The Examiner will also provide an opinion on whether the mark is inherently registrable or not.
The Examiner is not always right, and you can file arguments against the Examiner’s opinion. There are a number of other tactics for overcoming objections in examination reports but these are outside the scope of this article. If you encounter problems we would suggest you seek professional advice.
Remember the Examiner will not reject the application on the basis of marks cited in the examination report, but if the application is allowed to proceed without the cited marks being waived the Examiner will in some instances write to the owners of the cited marks inviting them to oppose your application.
Publication & Opposition
When the application is published anyone can file an opposition or notice of intended opposition within two months. If you encounter an opposition then although you can defend the opposition yourself you would be best off seeking professional advice.
Registration
Hopefully, instead of a notice of opposition you’ll receive the registration certificate. If you do, well done, you are now the owner of what can be a very valuable piece of property, a registered trademark. You can now use the ® symbol next to your trademark (you can’t use this with unregistered marks, as that would be a criminal offence).
If you want trademark protection abroad then if you file applications within six months of the date of filing the UK application you can have them backdated to that date of first filing.
Remember that the first renewal fee is due 10 years from the date of filing the application and you should notify the UKIPO of any change of address.
Click through for further information on the benefits of trademark registration.
Do you need help?
If you need help with registering a trademark feel free to contact us – we can deal with the whole process for you.
We can get involved at any stage – helping you from the outset to make sure that the application is filed properly, or later on after filing if you encounter objections or an opposition.
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