Trade mark registration mistakes are more common than you think. Although it sounds as though it should be straight forward, it’s not, and when mistakes happen, they can be costly.
We’re not just talking about financial cost, but also reputational and time.
As trade mark attorneys, it’s our job to make sure our clients’ trade mark registrations go smoothly and afford them the protection they need. But we often see people who’ve ‘gone it alone’ only to realise registration isn’t as straightforward as they first thought.
To give you a heads up, here are the seven most common trade mark registration mistakes we see. Have you made any of them?
1) Not registering a trade mark
There are a lot of companies out there who believe it’s not essential to register their trade mark. Often, the belief that trade mark registration is just for the ‘big boys’ drives this misconception. It’s not. Every company, regardless of its size benefits from registration because it ensures their legal rights to the name so they can continuously use it and provide legal recourse to anyone else who attempts to use their trade mark, or one that is similar.
2) Not carrying out a trade mark search before use and/or registration
If you start using a trade mark without checking to see if it’s available first (and that there is nothing similar), you could find yourself subject to an action for trade mark infringement and/or passing off.That’s the last thing you need because it will be costly and very time consuming. Not a great way to start your business.
3) The belief that a company name or domain name will provide sufficient protection
Your company name (even if registered) and your domain (URL) will not give you the same protection as a registered trade mark. If you rely on your Companies House registration or domain name, at best you will have to rely on the common law of passing off, which is difficult, time consuming and expensive.
4) Not enforcing your trade mark rights
Not enforcing your trade mark rights is like insuring your house and not making a claim when the ceiling falls down. After registering your trade mark it’s important to monitor whether anyone else applies to register the same or similar mark. Another mark on the register which is the same or similar will weaken your rights. In the same way, you should also keep an eye on your competitors to make sure no one is using your using the trade mark without your permission.
5) Allowing your brand to become generic
If you think that your brand name used a common name means you’ve made it, sorry, that’s not how it works. When this happens (as in the case of Sellotape, Thermos, Hoover, and Escalator), you will lose your legal protection. To stop this happening, set out clear guidelines for your trade mark’s use, and use it as an adjective, not as a noun or verb; for example LEGO® toy blocks, not ‘LEGOs’.
6) Failing to use the ® symbol
Even if you have registered your trade mark, it’s not compulsory to use this symbol. However, you’d be daft not to because it serves as useful notice to third parties of your rights as owner of the brand.
7) Failing to keep up your registration
If you want to keep using your trade mark, and benefit from the legal protection it gives, you have to renew it. That means you need to keep good records or delegate their safekeeping to your trade mark attorney, who will have specialist software for monitoring renewal deadlines.
As you can see, registering your trade mark isn’t the simple, one-off exercise you thought it was. If you want to continue to enjoy the protection it offers, you have to be on the ball. That’s why many companies are investing in the services of professional trade mark attorneys, so they know it’s being taken care of.
If you want to register your trade mark, or to find out about our WardWatch® service: