A quick Trademark Registration 'Boot-Camp' that aims to explain the legal and commercial benefits of trademark registration and what every business should know about how to protect the legal rights in their business name....
1. Exclusivity: The One and Only…
Trademark registration will confirm your legal ownership of the name or brand and enable you to stop others using your name for the same, or similar, goods or services. A successful trademark application will mean that you quickly become the only business that can use the name in your sector. This cannot be achieved by domain name registration or by company name registration. Any name you adopt should be legally available, satisfy the criteria for trademark registration and should be registered as a registered trademark without delay. Trademark registration will ensure that you have the exclusive right to use your particular name or brand in your product or service sector in the geographic market for which you have obtained registered rights.
2. Stay Safe: Avoid Infringement Claims
A successful trademark registration demonstrates conclusively that your name is deemed to be legally available in your market sector and does not belong to anyone else. It generally means that pre-registration searches showed your name to be free for use and registration and that no one else was able successfully to oppose your application. Once you have obtained a trademark registration, the risk that your use of the trademark will infringe the trademark rights of anyone else is vastly reduced. The converse is also true. If you steam ahead and adopt a trademark without checking if it is available, and protecting it by trademark registration, you are running a very high risk that you will sue for trademark infringement by the owner of the mark. This ultimately means court action against you to restrain your use of the brand, and award of damages, confiscation and destruction of infringing stock and heavy legal costs.
3. Protect Goodwill and Reputation
A strong and memorable brand that is protected by trademark registration is the surest legal foundation on which to build the reputation and goodwill of any business. A business that soldiers on without the benefit of a registered trademark is missing out on a huge commercial opportunity. Strong registered brands (Mercedes, Google, Amazon, iPad, The London Eye etc) quickly pass into the collective consciousness of the world consumer market and become synonymous with quality, consistency and reliability.
4. Get Noticed: Differentiate Your Business
The main purpose of a trademark is to denote the origin of the products or services to which the trademark is attached. The trademark becomes a badge of origin and quality. In short, the consumer knows where it came from and what to expect. So every business has an equal opportunity to adopt a distinctive brand that it alone owns and protecting it by trademark registration. This enables the business to differentiate itself from every other business in the same market sector. It makes no sense to adopt a name that is already in use, or is similar to an existing name, since this will not serve to differentiate your business from the competition. Your brand should be strong, memorable and unique and, for this reason, invented or quirky words tend to be best.
5. First is Best: Avoid Pre-emptive Registration
Once you have identified a legally available name that you want to adopt for your business you need to bang in a trademark application without any delay. If you do not do so, someone else may file an application before you and you will lose the opportunity to own the name exclusively. This may be because someone else has seen your name in print or, for example, at a trade-show, and thinks it is a good name that they would like to use. It may simply be an honest, concurrent application. Whether it is coincidental or intentional, the first application will usually take precedence. To avoid a pre-emptive application act fast and do not invest in any name until you know that you have successfully protected it by trademark registration.
6. Anti-Sabotage Measure: Competitors
If you fail to protect your name by trademark registration, you lay yourself wide open to attack by competitors you want to close you out of the market by filing an application to register your name and then alleging that your continued use of the mark constitutes trademark infringement. If a competitor gets a trademark registration for your name, or a very similar name, you may have to stop using your brand and could effectively lose your business overnight. It may be possible for you to seek a revocation of the competitor’s mark on the basis that you used it first or perhaps that the competitor is acting in bad faith but this is likely to cost you a very substantial amount in terms of legal costs and you may fall short on proof. Sometimes an oversea competitor will seek to register your trademark in national markets where you have not protected you name for the same products(eg by filing an EU or Community Trade Mark for all of the EU Member States) with the intention of preventing you from expanding into those markets or selling your products in those countries without rebranding your products for those markets.
7. Anti-Retaliation: Employees, Suppliers, Developers
Given that anyone can file an application to register a trademark if they have a genuine intention to use it, you can see that it is very easy for an aggrieved supplier or ex-employee, or anyone else who has a grudge against you, or your business, to retaliate by getting a trademark registration for your name if you yourself have neglected to protect it. This can cause you a major headache. It is quite common for developers or joint venture partners to make a pre-emptive, retaliatory application for trademark registration of the business name in order to give themselves a negotiating platform in the settlement of a wider, ongoing dispute. Prompt trademark registration in the first place closes off this avenue of attack and ensures that your business cannot be held hostage over the ownership of its own name.
8. ‘Lock In’ Brand Value
By protecting your business name by trademark registration you are effectively ‘locking in’ your brand value. If you think about it, if you develop your business under a brand that you have not take the trouble to check out and protect, you are taking the very real and inevitable risk that the name you are using is legally owned by someone else. In such a case, all of your hard work and advertising spend under that name is actually simply building up the goodwill and reputation of a business that is owned by someone else. When you are obliged to stop using the name you will lose any brand value that you may have acquired and will have to start again with a new name. Lock in the brand value of your business by trademark registration.
9. Defeat the ‘Copy-Cats’
If you are successful, often competitors will try and copy your name and business model. They may, for instance, try and adopt a variant of your url. If you have protected your name by trademark registration, any copying of the domain name in this manner will probably amount to a trademark infringement and you will be able to stop them. Also, it is possible to protect, not just word marks, but also strap-lines, graphics, shapes and colours by trademark registration, so it is often possible to get a degree of exclusivity for the ‘look-and-feel’ of your business in this way, which also makes it much harder for competitors to copy your business idea effectively.
10. Assure Investors
Given the fundamental importance for any business of exclusive ownership of its brands and trademarks, potential investors often, quite rightly, require the business to demonstrate such ownership as a condition of making the investment. The most conclusive demonstration of ownership is a trademark registration certificate. Conversely, a conflict over name ownership is quite often a reason why investors do not proceed. Quite simply, they are not interested in buying into a legal dispute over the ownership of one of the main assets of the business.
11. Due Diligence: Satisfy Buyers
If you are planning to sell your business at any time, you will need to protect all of your names, marks and brands by trademark registration. Any prospective buyer will want to know that you have all of these rights under ownership and that there are no third parties using same name, which would obviously dilute the strength of the brand, or worse, actively seeking to prevent you from continuing to use your name. Since the value of the goodwill of your business is inextricably linked to the ownership of its trading name, failure to obtain a trademark registration can not only mean that you will not get the price you expect for your business, but, in difficult cases, your business may simply become unsaleable because of uncertainty or legal conflict over your right to use your current business or product name.
12. Support Expansion: Franchising, Licences, Agents
A strong brand protected by trademark registration is a sure footing on which to develop a business by way or franchise, licence or agency. A franchise is, in effect, nothing more than a glorified trademark licence and the very least that any franchisee will expect is the unfettered right to use the franchise name. The commercial benefit of being part of an umbrella brand is, after all, one of the main reasons that people invest in a franchise. A registered trademark can be licensed for a royalty. Any agency or distributorship network will want the comfort of knowing that you have the sole and exclusive legal right to use your product names and the only way this can be obtained conclusively is by way of trademark registration.
13. Company Registration: Control Company Name
Registration of your business name at Companies House, or any national company registration office, gives almost no name security or name ownership rights. In fact, at least in the United Kingdom, it simply means that no one can incorporate company under exactly the same name. Very similar names will often be accepted for registration. However, you protect your business name as a registered trademark, this will prevent any other company from incorporating your name into the name of their company the same products or services in which you trade. In the UK, if someone registers a company name that is the same as was similar to a trademark that you have protected by way of trademark registration, you can object to the Company Names Adjudicator and obliged the company to change its name to a different name.
14. Domains: Avoid Over-reliance on a URL
Whilst it is often difficult to register a descriptive URL as a registered trademark, there is no reason why a name that you have protected by web trademark registration cannot be incorporated into the domain name for your business. Anyone who tries to adopt the same or a similar domain name for similar products or services will then be infringing your registered trademark rights. Trademark registration therefore gives you a degree of control over your domain names and enables you to police similar URL registrations successfully.
15. First Mover Advantage: Protecting The ‘Good Idea’
It is frequently the case that a good business idea cannot be protected legally in the sense that it is not possible to stop other businesses copying the idea as soon as it is launched. Provided the imitators do not infringe any copyright or patent rights they can usually replicate the idea. However, if you are first to market with your idea, you can secure first mover advantage by branding your idea with a strong and individual trademark that is protected by trademark registration. Often the idea itself becomes referred to in common parlance by the trademark itself and, whilst this is questionable from a strictly legal viewpoint, it is certainly a major commercial advantage and is a great help in securing and maintaining market share in the face of copycat competitors.
16. International Roll-Out: Secure Priority Dates
The filing of a trademark application secures a priority date for the future protection of the trademark. This means that if the business succeeds and it becomes necessary to protect the name by trademark registration more extensively in further jurisdictions, trademark applications can be filed in those jurisdictions within the applicable priority period (usually six months from first application) whilst still maintaining the benefit of the original filing date. This means that the protection afforded by any further trademark registration filed during the priority period will backdate to the date of the first trademark application and anyone that has used the trademark in the meanwhile will have been infringing the further trademark registration.
17. Cost-Proofing: Prevent Future Costs
Protecting the main business names by way of trademark registration is a relatively inexpensive process that effectively cost-proofs the business against the potentially very substantial costs of dealing with an alleged or actual trademark infringement. The costs that can be avoided in this way include not only your own legal costs, but liability to pay the legal costs of the aggrieved trademark owner, substantial compensation by way of damages, the loss of all infringing stock and, finally, the costs of carrying out a complete rebrand of the business (including all websites, facias, advertising and other printed material) and protecting the new brand by way of trademark registration.
18. Simplicity: Avoid Legal Complication
There is a satisfying simplicity to being able to hold a trademark registration certificate and wave it in the general direction of anyone who tries to use your name. That is usually sufficient to prevent infringement. In the absence of trademark registration is much harder and much more expensive to enforce common law trademark rights or sustain a case breach of copyright. The burden of proof involved in bringing such cases is substantial and the legal position in relation to her actions for passing off and copyright infringement is always complex. In the case of passing off it is necessary to prove substantial reputation, confusion in the marketplace and consequential financial loss. Legally, this places a huge burden on any business that can be avoided by trademark registration.
19. Logo Rights: Protect Graphics, Logos and Designs
It is possible to include in any trademark registration program not only the actual name of the business but also any logos, graphics or designs used in the business in relation to its products or services. In the absence of trademark protection, it is necessary to fall back on actions based on copyright and these are notoriously difficult to bring.
and so to bed.......
20. To Sleep at Night
The best reason for protecting your business by way of trademark registration!