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Trademark Registration - Some Mistakes to Avoid

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Tuesday May 3, 2011 at 6:24pm

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.

First Trademark registrationEver 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. trademark registration

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.

trademark nameGood 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. Gmail Trademark

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.

1 Comment

Sam Webster | Thursday May 5, 2011 at 5:40pm
Great article and what a laugh! Who could know that trademark registration is such an art. Pajero! Whatamistakatomaka! Lol :)...

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