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Why your trade mark could be worthless and what you need to do about it

One of the biggest tasks involved in filing a trade mark application is correctly drafting the list of goods and services, namely the “specification”.

Now this may sound simple, but this part of the process is critical.

The fact is that there are many different ways in which a poorly drafted specification can have a negative impact on the worth of your trade mark. We look at two of them below.

Inadequate coverage

The Register of trade marks is divided into 45 different classes of goods and services, under an international system applied by around 150 Trade Mark Offices worldwide. The class headings describe broadly the type of goods or services found in each class, and cover all manner of goods from tap washers to spacecraft.

Your attorney will be able to guide you as to which classes to choose for your type of business, and a good attorney will be able to weave competently between different industries. For example, over the last week I’ve been involved in restaurants, software apps, high-fashion clothing and dietary supplements for animals. This variety is one of the best parts of the job. The strangest specification I ever drafted related to a part of a deer which was renowned as a delicacy, but perhaps it’s best to leave that story for another time.

When your trade mark attorney takes you through the initial stages of your consultation, he or she will review your website and ask questions to find out all about your business. The answers will ensure that the specification of the application covers everything you do, or intend to do, under the mark.

Why is this important? It’s not possible to broaden an application once filed, and if you miss out any goods, you will need to file another application. The way the costs are structured mean that the highest fee relates to the first class, and lesser fees are applied to any further classes filed at the same time. In other words, getting it wrong will ultimately cost you a lot more.

Also, filing to cover goods in another class a way down the line may mean that someone has beaten you to it, leaving you with no other option but to choose another brand for those goods.

Registration for the wrong goods

This is a mistake many businesses make when they go down the DIY route.

Without professional knowledge of the thousands of terms which can be found in each class, it is very easy to choose the wrong goods or services to cover your activities. This means that the resulting registration is weakened or worthless. The cover you get is the cover you ask for.

A recent cosmetics client needed our assistance after self-filing a trade mark in the wrong class, choosing body cream in Class 3. The products were medicated and therefore should have been in Class 5. The result? Starting from scratch with another application for the right goods.

Even the punctuation used can cause difficulties in interpretation of the nature of the goods, and lessen coverage.

It is sometimes only when you seek to enforce your trade mark against an infringer that such issues are discovered, leaving you and your business vulnerable to competitor encroachment.

The solution to such problems is to use professional representation, and ensure that you cover all bases in your initial discussions so that your attorney can do the best job of obtaining an effective monopoly for you.

For assistance in avoiding these pitfalls, please email [email protected] or call us on 01223 421779 for an initial discussion.

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February 17, 2016 Rachael share this article