Is a bespoke trade mark specification essential?
Let’s look at the evidence.
The UK Intellectual Property Office (UKIPO) uses a worldwide trade mark classification system that groups together similar goods and services into 45 classes for trade mark registration purposes.
Registering your trade mark is essential. It prevents someone else registering the same or a similar mark within the same class. Therefore, it protects your brand.
That’s why your specification and choosing the right class or classes is so important.
Trade mark specification
Preparing your trade mark specification is a crucial component in achieving the best possible protection for your brand. If you opt for the DIY route, it may be tempting to pick a class (or classes) and create a standard specification. Some firms will also do this to save time.
Another pitfall is making your specification too broad. This could lead your application to cover goods and services that you don’t intend to market. The problem with this approach is that you will potentially:
- Lose money because your application is rejected
- Become subject to potential claims for non-use of your trade mark, once registered
- Unintentionally become a trade mark troll
- Find yourself with inadequate protection
You can avoid this by submitting a bespoke trade mark specification.
How to be specific
The best way to determine which class or classes you should apply for is to prepare a detailed specification of the goods or services for which you intend to use the trade mark.
It must be clear and precise; covering not only the products/services but also any that will be of future interest.
Take into account things like:
- Their function and purpose
- Whether they consist of any raw materials
- The activities involved in the service
- The subject matter or activity of the services
This is where things can get tricky, which is why it’s always best to use a professional trade mark attorney to prepare your application.
Removing your blinkers
One of the most significant problems with creating your specification is that you’re too close to your business to see the bigger picture.
When using an external expert, they can take an outsider’s view. Asking questions, they will be able to analyse your product or service to identify the relevant classes in which it should be registered.
Therefore, the bespoke specification they create for each application will give you the best protection possible for your current situation and the future.
Getting your trade mark specification right first time
Getting it right the first time is essential. Not only will it give your brand ultimate protection, it will also save you a lot of money.
Rejected applications are costly both in terms of cash and time. However, it’s also important to note that once your application is filed the specification can’t be widened.
Therefore, if in hindsight you realise the specification in your application leaves your trade mark vulnerable, you will have to file another one. This will attract additional costs and will leave your brand unprotected.
Considering your brand is your company’s most valuable asset, ensuring its protection should be your primary concern.
Working with a professional trade mark attorney, who will create a bespoke specification to ensure full protection of your brand, will pay dividends. So don’t leave the protection of your reputation to chance.
Don’t risk your brand by submitting a poor trade mark specification. For help with creating a bespoke specification for your trade mark application: