9 Trademark Registration Questions For Trademark Lawyers
Peter Adediran’s specialist niche area of practice is copyright, trademark and patent disputes and protection relating to digital media including websites and mobile applications PAIL Solicitors. Read more on PAIL’s Resource Library
Any small or large business that is venturing into a crowded and competitive market must have a creative trademark strategy. In a crowded market, a trademark will be among your business’s most valuable assets.
If you have just started a new business or are already trading, and are not marketing under a registered trademark the chances are you will be considering it. The sorts of questions you will be asking are: Does my company have a brand? If not, do we need one, and how do we go about registration? Is it a straightforward process that we can do ourselves or should we involve specialists?
The short answer to whether it is worth registering a trademark is yes. A mark is one of the ways to get your unique identity to shine in a crowded marketplace. A trademark can prevent other companies from piggybacking off the goodwill you have generated building your name, by pretending to be you or to be associated with your business.
A healthy level of competition in any market benefits both businesses and consumers. However, competition can stop your business before it has even started or cripple an established one. If your competitors are always a step ahead of you, it will eventually lead to the failure of your business. Brand building is one of the principal ways you stay ahead of the competition.
“Give me six hours to chop down a tree, and I will spend the first four sharpening the axe.” ― Abraham Lincoln
Preparation, preparation, preparation.
However, if you do not know much about trademarks seeking legal advice can be a daunting task? If you don’t know where to start, this article will assist you.
Here are nine mandatory questions you should consider before you approach a lawyer to register your trademark.
1. What is a Trademark?
Going back to basics, this should be your first question. If you’re not sure what a trademark is then you will not be able to understand the registration process. The registration process cannot be effective without a thorough understanding of the purpose of the trademark. Although you can research what a trademark is yourself, generally a more in-depth knowledge is required than the basics to get the most out of the registration particularly if in a crowded market where the registration is likely to be opposed by an earlier mark.
2. Is The Chosen Lawyer Experienced?
Choose an experienced lawyer that specialises in trademarks. You should check the lawyer has the relevant background. If the lawyer you’re considering does conveyancing typically and doesn’t have experience working with brands, you should probably go with a specialist. It would be best if you chose an experienced and specialist lawyer. A lawyer may be a specialist, but the more experienced they are, the more effective the advice that they will provide when it comes to trademarks.
3. What Steps Do I Have to go Through?
“Give me six hours to chop down a tree, and I will spend the first four sharpening the axe.” ― Abraham Lincoln
Preparation, preparation, preparation. You will need to familiarise yourself with the various stages of trademark registration. If you are not prepared and jump into the registration with a scattergun approach, your listing may not be successful, or it could be successful but not be useful to match the actual function of the mark which is worse than if the registration was unsuccessful.
Starting prepared is much better than jumping into things without knowing what you need to do. Make sure you have a detailed understanding of each step of the trademark process.
4. Does My Mark Qualify?
Your brand may not be capable of registration as a trademark. Before deciding on the brand to trade under, make sure it can be trademarked. We have written several articles on registration of trademarks including our article – a brief guide to trademark protection and Do it yourself trademark registration in 2016. Trademark law is continually evolving. A specialist trademark lawyer keeps up to date with the current law. From 14 January 2019 the UK implemented Trademark Directive 2015 via The Trademark Regulations 2018. The purpose of the Trademark Directive is to make trademark laws consistent across Europe. Both the Trademark Act 1994 and the Trademark Rules have been updated to reflect the changes.
It would be best if you had a unique brand for a valid trademark. There are certain things you cannot include in a mark. Your chosen brand may already be registered. Another company may already be using the same or similar brand.
Do not just shoot from the hip in the trademark process; make sure you get preliminary advice.
5. Why Should I Register My Trademark?
Registering your trademark is not compulsory, but there are many advantages to doing it.
If you are in a crowded, competitive market, a creative trademark strategy is critical to your success. If you are in a significant commercial city like London, Paris or New York, nothing will build trust, amplify customer service and enable engagement on social media and other marketing channels like an authentic well thought through brand.
Trademarks are essential in a market space in which large numbers of businesses are competing with each other, supplying similar products and services, to similar customers with little to differentiate them except quality and service standards. For example, it’s harder to prove that another company is trading on or damaging your reputation if you’re defending a trademark that isn’t registered.
A trademark lawyer can help you understand the specifics of both unregistered and registered trademarks. That knowledge will help you decide which path to take to protect your brand name.
6. How Long Does it Take?
You may think registering a trademark is as simple as choosing what you want to trademark and submitting it to the UK or EUIPO trademark registry. That’s not the case, in any case. If you jump into the registration process expecting a quick, efficient and well-functioning trademark registration without prior proven experience, you’ll be disappointed.
Ask your trademark lawyer all about the process of registering your trademark. Make sure you understand the time and effort involved before you start the process. Otherwise, you may become frustrated in the future due to impatience and lack of understanding when either your registration gets rejected or you find your registration is useless when you need to use it to repel an attack on your reputation and market share.
7. What Databases Do You Use?
A good trademark lawyer will check databases to assess the risk of your proposed trademark. A diligent search will reveal the same or similar marks that could frustrate your registration as well as prove expensive if you’ve already spent thousands on a marketing campaign.
An experienced trademark lawyer understands that trademarks are functioning assets which should reflect and protect the underlying business that they identify, and not just a box ticking exercise.
It is not enough to find out if your exact trademark is already in use by someone else. The spelling of marks may be different even f they sound the same.
To avoid cultural or linguistic misinterpretations and to copy an existing name phonetically, you need a detailed search which might require using premium databases.
8. Budgets and Cost?
There are costs associated with creating and registering a trademark. To avoid surprises, it’s always a good idea for an advance quote as to the cost of registration and any related advice.
Consider the costs involved in every step of the registration process, as well as what you’ll need to pay your lawyer for his or her services. Find out all you can to avoid financial setbacks along the way.
What is also essential is the budget. Everyone has a budget. However, most people do not want to reveal their budget because they do not want to get charged all of it should the actual price could be less than the amount they had in mind. Not having a budget is, of course, impossible because your price range will not be indefinite.
A good trademark lawyer would never charge a client more than what it cost, according to the time spent, for the work. Lawyers want clients that will stay for the long term. Naturally, the price quoted will match what you tell them. If lawyers are unable to deliver the service you require – registration and related advice – for the amount you can spend then they will say so without wasting further time. If your budget is known, then your lawyer can figure out how much time can be sent on your work within your budget as an alternative if the quote is above what you can handle.
9. How Can I Protect My Trademark?
There’s no point in creating a trademark if you’re not willing to protect it. Trademarks are functioning assets. However, how, precisely, can you defend it? Your lawyer will be able to tell you all about that.
Companies may use your trademark, either purposely or without realising, so you’ve got to keep an eye out. Prepare yourself by knowing what you can do to prevent that, and what you can do when it happens. The more prepared you are, the better you’ll be able to handle situations of trademark infringement if and when they arrive.
Talk to a Trademark Lawyer Today
Creating and obtaining a trademark for your company may seem daunting and confusing, but it doesn’t have to be either of those things. Talking to a trademark lawyer will help you settle any fears, confusion, or concerns you have.
Your trademark represents the character, culture and functionality of your company, it is the principal way you can stand out in a crowded, competitive market. A trademark registration is not just some mundane administrative, bureaucratic exercise but a crucial element to your success as a business.
Keep the above issues in mind, and start thinking of protecting your brand, then reach out to a lawyer to make sure you’re covering all your adequately prepared.
We’d be delighted to help you through the trademark registration process. Contact us today at firstname.lastname@example.org to get started or complete our free registration quotation form.
By Peter Adediran
10 04 2019
This article details the initial steps to take when considering registration of a trademark but is by no means exhaustive. If you are seeking advice on registering a mark and have read this article, you must take the opportunity to go and seek professional legal help from a solicitor or barrister. The information and any commentary on the law contained on this web site are provided free of charge for information purposes only. Every reasonable effort is made to make the information and analysis accurate and up to date, but no responsibility for its accuracy and correctness, or for any consequences of relying on it, is assumed by PAIL Solicitors. The information and commentary does not, and is not intended to, amount to legal advice to any person on a specific case or matter. Obtain an accurate, personal opinion from a lawyer about your case or matter and not to rely on the information or comments on this site. We do not accept responsibility for the content or accuracy of linked sites.