You had a trade mark to register for your business. After doing a Google search, you decided the application processes looked pretty straightforward. Therefore, due to all your other start-up costs, you chose to go down the DIY route.
Encouraged by all the advice you read online you didn’t worry about reading up on all the legal spiel that goes with trade mark registrations – who has time for that? You just completed the eTM3 form, picked the classes you wanted to register your mark in, and submitted it to the UKIPO.
Your application then entered the examination stage, and that’s when the wheels fell off.
What is the examination stage?
This process is where the UKIPO take an in-depth look at your application and decide whether it is legally suitable. The problem is it’s now stuck, and you don’t know what to do.
Before we look at that, let’s look at the examination stage a bit closer to see what went wrong.
The UKIPO assesses whether your application is a valid trade mark and whether it can be registered.
Trade mark registration gives you exclusive rights. However, one trader can not monopolise a mark that other businesses should be free to use. Therefore, the UKIPO will object to the registration of marks which:
- Describe the features of the goods or services (e.g. the word ORANGE for fruit)
- Lack distinctive character (e.g. common geographical names or surnames, or laudatory terms such as FIRST CLASS)
- Are customary in everyday language or trade
This is called a refusal on absolute grounds.
When the UKIPO receive your application, they will conduct searches. This highlights whether there are any conflicts with existing trade marks.
If there are, the UKIPO prepares a search report and sends it to you. You then have a two-month period to consider your position and inform the UKIPO whether you intend to:
- Continue with the application
- Amend the specification of goods/services to be covered to avoid conflict with the earlier registration
- Withdraw the application
If a response isn’t received, the UKIPO will assume you want to continue with the application as originally filed.
Why is your trade mark application stuck?
The sticking point could be any of the above. It could also be that the specification you have used is incorrect or too general.
Whatever the reason, your DIY route could be about to cost you a lot more than you bargained for.
While your application is stuck, your trade mark (and therefore your brand) remains unprotected.
Finding a solution quickly is vital, which is why it’s time to find the right help.
Working with a trade mark attorney, they will be able to evaluate your original application in tandem with the response from the UKIPO to find the right solution that will un-stick your application.
Looking at your proposed trade mark, they will be able to assess its strengths and recommend the changes needed to get it accepted. If it is stuck because of its similarity to an existing trade mark or prior rights, your attorney will be able to work with you to reach an agreement that is satisfactory to both parties.
Getting a trade mark attorney to work with you from the outset would have prevented any of this from happening. It may be an additional cost, but it would save you a lot of time and hassle.
If your trade mark application has got stuck in a rut, or you’d rather get a professional in from the outset: