Registering a trade mark is essential if you want to protect your business. But there’s a wrong way and a right way to go about it. To help you avoid the pitfalls, we’ve listed five of the biggest mistakes businesses make when filing a UK trade mark application.
1. Lack of searches
Before you even think about filing a trade mark application, it’s important to find out whether similar trade marks already exist in your sector. This means conducting a thorough search of the trade marks database – not just a Google search! If your proposed trade mark is in any way similar to an existing trade mark, you’ll either need to think again, or you’ll need to come to an agreement with the trade mark holder. If you fail to take these preliminary measures, you run the risk of expensive legal action.
2. Mistakes with specification
When you apply to register a trade mark, you need to describe the goods and services the trade mark will be used for – both now and in the future. This is called drafting a specification. It involves selecting the correct classifications for your goods and services, and precisely describing their scope. If the specification is too narrow, is incorrectly worded, or is in the wrong class, it may not sufficiently meet your business needs. Equally if you draft a specification that is too wide you are more likely to be stepping on someone else’s toes and you may even be ‘acting in bad faith’. Whichever way, you may find that when you come to rely on it, your trade mark application is effectively worthless.
3. Not filing a word mark
A brand may have a logo along with a name. Both the logo and the words can be protected as trade marks. These are known as device marks and word marks respectively. Some businesses overlook the need to file a word mark – even though word marks almost always provide more protection. This is because it gives you the right to use the protected words in any form. A device mark, on the other hand, only protects the specific logo that’s been registered. This can be very limiting and when you come to rely on it to stop an infringer, may not offer the protection you need.
4. Series applications mistakes
If you have different variations of your trade marks, it may be cost effective to make a ‘series’ application instead. However, series applications have very specific requirements. In fact, only around 60% of applications are accepted. To ensure you’re one of them, you need to be certain what qualifies as a series, and how to represent series marks on the application form. If the marks differ significantly, your application will be rejected.
5. Delays in filing
Running a business is no easy feat and it’s likely that your main focus is the day-to-day operations of your venture. As such, it’s all too easy to let the trade mark application fall down the to-do list. However, if you fail to act quickly enough, you may find that someone else beats you to it. This can be disastrous, potentially meaning that you have to re-brand your company. Otherwise, if you try to register a trade mark that is similar to someone else’s, you could face a Notice of Threatened Opposition.
Free Guide: Everything A Business Owner Needs To Know About Trade Marks
The guide will explain to you in detail the essentials of trade mark protection including:-
- Choosing a distinctive brand name – why a good choice will resonate with your customers and reduce your advertising and marketing spend.
- The importance of avoiding the descriptive/ generic trade mark trap.
- The importance of pre-filing searches – done the correct way – to avoid future legal action against you and the risk of having to rebrand.
- Strategy on when to time your application.
- Realising the value of your trade mark – why your trade mark is considered an asset on your balance sheet.
- The importance of maintaining and enforcing your registered trade mark rights once your mark is registered.
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Working with a Chartered Trade Mark Attorney ensures that your trade mark application is accurate and meets the interests of your business. It also means you can hand over all the hard work to a professional, leaving you free to focus on the running of your venture.