Latest Blog posts from UKTrademarkRegistration.co.uk

The Trademark Registration Checklist - 20 Reasons Why You Should Register a Trademark

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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!

Celebrity Trademark Registration - Palin, Assange: Who's Next?

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Since bursting onto the political scene three years ago, Sarah Palin has had her share of beltway bustups. Add to these a recent sideshow at the United States Patent and Trademark Office (based in Alexandria, Virginia – within the confines of the metonymic Washington Beltway).

Palin, along with her daughter Bristol, is attempting to protect her name as a registered trademark.

The applications caught the attention of politicos, pundits and trademark lawyers when it came to light that Sarah and Bristol had forgotten to sign the forms giving their consent to have their names as trade marks.

Apparently, the issue has now been fixed; the applications have received USPTO approval and were published for opposition in May.

The issue of signed consent is a particular requirement under US trade mark law for famous individuals seeking to protect their name by way of trademark registration.

Seeking trademark protection for celebrity names has become standard practice.

Trade mark law is part of the bundle of rights that enable famous people to commercialise their reputations by endorsing breakfast cereals and selling licensed merchandise ....like action figures. A Sarah Palin action figure does not seem to be in the offing which is rather surprising. I guess it might look something like this. Alas, Governor Palin’s application covers only two service classes – for “a website featuring information about political issues” and “motivational speaking services in the field of politics, culture, business and values.”

Daughter Bristol’s application only claims a single class, for “motivational speaking services in the field of life choices.” Whether one finds the young mother’s entreaties for abstinence motivational is a matter of personal taste, and perhaps magnanimity. It is a shame about the action figures though;

I would have loved to pit the miniature Palins against my Obama action figure (Google it!). I might have thrown a Teenage Mutant Ninja Turtle into the mix as well.

Regardless of your rooting interest in the above-referenced melee (which may or may not mirror your political inclinations), this episode demonstrates both the value of a strong trademark registration and the potential complications that arise when developing such rights.

It is a pity that the specifications were quite so limited and we would have thought that considerably wider specs would have been justified.

In addition to commercial endorsement and similar opportunities, celebrities are also using trademark registration as a means of attempting to control the media exposure of their name and their views as is exemplified by the application for registered trademark status by Julian Assange.

So, who’s next? Are you feeling famous? .....Well, are you?

.What a .Lot of .Fun .We .Will .All .Have .Now

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New-style ICANN Domains:The Net Widens, Don't Be Caught!

ICANN, the body that controls the assignment of domain names and web addresses has announced this week that from now on, URLs will not be restricted to the standard suffixes such as .com, .org and .co.uk.

Apparently, anything will be possible when the new scheme rolls out - for example we can expect to see www.transportfor.london and www.google.search quite soon.

Any word could replace the "dot com".

Accountants, for instance, could be exptected to use ".accountants", ".audit", ".money", ".finance", ".tax", ".advice", ".professionals" or even ".acc".

A clothing brand could use anything from ".fashon" to ".socks" ...the list is endless.

...but isn't this all rather a .double-edged sword?

(Geddit? Dot double-edged sword? - Ed)

.Yes, .at first blush, it is a .great move and signifies the opening up of the .Internet away from its .history as a technical tool and towards the .commercial and .social .medium that it has .become.

But for businesses, although the .marketing opportunities are .exciting, the .risks are .severe if you don't have your .legals covered.

Until now, most .businesses .protect their internet presence by .buying up various .domain names - the popular suffixes, some common misspellings, and any obvious dashes or other .punctuation.

But this .approach will no longer .work - with the opening up of the system, there will simply be too many variations for this to be a cost-effective solution. The same range of words that give rise to vast marketing opportunities give rise to .deep .branding .hazards.

(OK, thats enough dottiness now!! ...er .Editor)

The good news is that the trademark registration process should still enable you to protect your brand. It is inexpensive to protect a brand as a registered trademark and the Madrid Protocol allows us to file one application in London that zips around the world. Indeed, it has never been cheaper to get a global ownership of a brand in all the markets that matter. This is now even within the reach of modest-sized SME's and even some start-ups.

Trademarks are respected on the internet, too. An international legal system known as the UDRP allows trade mark owners to claw back domains that should rightly be theirs from cybersquatters, hijackers and other unruly users of the internet.

Given the way in which a clever dot suffix can appeal to the search engines businesses will find their goodwill increasingly hi-jacked unless they protect it by trademark registration.

ICANN's new system is set to launch in January 2012, ..just 6 months from now.

Put simply, business owners now must consider the question: As the opportunity to revolutionise your internet presence arises in 2012, have you protected your basic trademark position properly?

Free Trademark Search Services - Beware 'Instant' Online Search Results

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Message: Beware of 'instant' free trademark search results online.

Some trademark websites offer an immediate online search result, In our experience, these online automated trademark search sites are sometimes unreliable.

The 'instant' trademark search results that they report can lead to snap decisions based on incomplete information.

We had an enquiry today (1st June 2011) from a restaurant owner who had just done a search using one of the online trademark search sites. The search result had indicated that his chosen name was legally available and had given him the go ahead to proceed. He was about to commit to a cost of about £800 including registration fees and VAT.

Fortunately, he had the sense to check this ‘immediate search result’ with our free trademark advice service first. We ran some proper searches for him using the correct search parameters. Incidentally, we also gave a near immediate service but with the benefit of some proper consideration by a legally trained expert.

Surprise, surprise. Not only was the restaurant name which the other site had said was OK was most definitely NOT available, but if he had gone ahead on the basis of the result given by this online trademark search website he would almost certainly have been sued for a lot of money by the rightful trade mark owner.

We get daily examples of this kind of thing.

The consequences of investing in a trademark that seems to be available after getting a quick online report from one of these quick search websites can be absolutely catastrophic.

There is really no substitute for trusting a reputable advice-based service.

It costs you nothing to be sure of your trademark position. We can save you not only the cost of one or more abortive trademark applications, but, more importantly, we can often save you from the dire legal and financial consequences of investing in a trademark that is not legally available.

So don’t throw your time and money away on a trademark application until you have taken some sound advice, especially if that advice and guidance is free. That way you should avoid having to deal with potential legal proceedings and the cost of a re-brand. It goes without saying, that you should never invest in a brand until you are certain that you have obtained a trademark registration.

Talk to us before you commit to the cost of a trademark registration.

Our trademark advice service is free.

Beat the Cyber-Squatter - Register A Trademark

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Cyber-squatting, or domain name hijacking, is the practice of registering other people’s company names in an attempt to sell them on to businesses at a vastly inflated price. When a cyber-squatter parks themselves on your company name, you may find yourself faced with an asking price of several £000’s.

Typical methods of hijacking business names include putting in punctuation (such as dots and dashes), abbreviating words (‘limited’ becomes ‘ltd’) or even getting hold of the name in other countries. Cyber-squatters may also purchase common misspellings of a name or simply include a word that describes that company’s products.

If this sort of scammer targets your business name, they may purchase ten or twenty different variations of it all at once.

Combating the Scam

One way to protect yourself is to register several domain names yourself. If you beat the scammers to it, you can get rights to all the common misspellings and some descriptive words, then set them up to redirect to your original website. In fact, getting a portfolio of domain names is a smart business tactic too – as it gives you scope to split-test various web-sites, perhaps to market products or services in different ways to see which works best. But it is impossible to protect yourself against all the various combinations out there, simply because there are so many.

Trademark Registration

The best way to defend yourself against cyber-squatters is by taking action to register a trademark for the url or product name. Any use of the name by anyone else in your product or geographical market is then likely to be an infringement of your trademark rights. Basically, protecting your names and marks by trademark registration lessens dramatically the threat that the cyber-squatter can make of selling your url to someone else if your don’t buy it, or using it in competition with you.

Your trade mark can be protected across the UK, Europe or any country worldwide. The rights are very strong indeed, and a Registered Trade Mark is the scourge of the domain name hijacker although obviously the benefits of trade mark registration go way beyond this, It doesn’t just protect you online, but in every area of business and for every communication channel from printed labels to mass mail-outs – and not just for identical names, but for anything that’s confusingly similar.

Enforcing your Rights

Nothing ruins a cyber-squatter’s day like a Registered Trade Mark. Instead of having to gather endless evidence to prove your claim (as you would have to do if you had no Registered Trade Mark), a single legal letter is often all that is required to demonstrate your rights to the disputed domain name.

If they won’t surrender the domain name to you after a formal letter of demand, there is even an efficient legal process to have the rights transferred – so if you have your Registered Trade Mark, there is no need to go to court to enforce them. World Intellectual Property Office statistics for this tribunal process – known as the Uniform Domain Name Dispute Resolution Policy or UDRP – show a dramatic 28% rise in anti-cyberquatting claims. This is the sharpest rise since the UDRP was introduced in 1999. On average, over 17 domain name disputes were resolved each working day through the UDRP in 2010.

Some of last year’s claimants include global brands such as MasterCard, Ferrari and Tiffany, as well as online companies – perhaps those hit hardest by cyber-squatting – like Twitter, eBay, and Wikimedia foundation (the organisation behind Wikipedia). SMEs of all types also used the UDRP.

The UDRP is quick and operates under a strictly defined set of legal principles. While costs are not covered, they are minimised by the efficiency of the process and judgments are often delivered within two months of the initial complaint being posed. As well as tribunal arbitration, other paths of dispute resolution exist, including mediation and negotiated settlements.

Moral: If you have a brand but haven’t registered it as a registered trade mark, your business is vulnerable to legal attack, both in cyberspace and in the physical world. Beat the cyber-squatter with a trademark registration!

Trademark Registration - Some Mistakes to Avoid

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Since this is the first blog post on this new generation trademark advice site, it is fitting that we start with the first ever trademark registered.

Ever since BASS secured its classic red triangle logo, in 1876, as the first ever trademark registration, businesses have appreciated the vital importance of protecting their trademark, name and brand value by registration. Unlike a patent, which expires after a maximum of 20 years, a trademark registration can be renewed in perpetuity – and can grow hugely in commercial value over the years.

However, if you want to register a trademark, it isn’t just enough to come up with a trademark, name or slogan that is memorable - (think KODAK), appealing (BEN & JERRY’S), iconic (THE LONDON EYE) or, perhaps, with a hidden meaning (NYLON) – although when choosing a trademark you do have a great opportunity to be inventive. In fact, invented words and phrases will generally stand a much better chance of being protected by trade mark registration, than dictionary words …one of my favourites is LIQUID CHRISTMAS PUDDING for a festive beer.

You also need to avoid the absurd: remember PriceWaterhouseCooper Consulting deciding to re-brand as MONDAY? No?

Perhaps that’s because the howls of derision saw the name quickly dropped, and the business fall into the hands of IBM. A trademark laden with negative vibes. What everyone looks forward to - Mondays!

And it’s best to check out local linguistic niceties before you start exporting.

Learn from the example of Mitsubishi, which hastily dropped PAJERO as a brand in Spanish-speaking markets, after it emerged that the name was a slang term for an rather personal activity best not practised while driving.

Good brand advice is never expensive!

The primary purpose of a trademark, from a legal standpoint, is to distinguish goods and services as originating from a particular source, and so avoid confusion among the public. Trademark registration gives an owner a powerful legal monopoly over the use of a name for the specified goods or services in specific countries. So while there is nothing to stop any entrepreneur from formulating and launching a sweet, brown carbonated soft drink, don’t even think about naming it anything close to COCA-COLA.

A rather extreme example? Well, some well-established and highly-regarded businesses have sometimes taken their eyes off the ball when it comes to their trademark rights: when Google launched its G-MAIL brand a few years ago, it quickly ran into difficulties in Germany, where businessman Daniel Giersch owned the registered rights to use G-mail for similar services.

Daniel and Google – rather like David and Goliath – had something of a stand-off, which eventually saw Google announce through gritted teeth in 2008: “We can't provide service under the Gmail name in Germany; we're called Google Mail here instead”.

The simple fact of the matter is this: without a secure trademark registration, you have no safe way of promoting your business to your customers without the possibility that you may be infringing someone else’s trademark rights. Furthermore, you can find that any goodwill that you manage to build up in your brand or company name can be lost, even after many years, if someone else, deliberately or coincidentally, decides to register your name as a trademark before you do.

So, as soon as you start thinking of launching a new product or service, or expanding into a new country, you need to check out the legal position….or ask us to check it out for you using our free search and advice service.