“How do I register a trademark”: doing it right (the first time around)
In our last article, How do I register a trademark? [Part 1] we answered the oft asked question: “how do I register a trademark”? Simply put, serious businesses should always seek professional help. There’s just too many ways that it can go wrong.
But why exactly, when it seems like cheaper DIY solutions are readily available?
Here are 4 key reasons why we implore you to seek a professional service (doesn’t have to be us!) rather than going alone.
1. Clearing the way
Businesses launching brands need comprehensive clearance searches. These should be done by solicitors who know (and care) about the long term value of your IP and business.
A bargain basement search makes sure no identical marks have already been registered (and often self-filers go ahead without even checking for those!)
With professional guidance similar marks (phonetically or otherwise), can also be rooted out. Not spotting these can be just as risky. A professionally reviewed search makes sure you hit the ground running and have ample room to build reputation moving forward.
2. A mark of distinction
It may seem like registering a trademark is a simply a case of choosing your name and registering it. But it’s actually a business decision you should think really carefully about.
A common issue with self-filed marks is that they tend to lack distinctiveness. Distinctiveness, in this case, means that they have original attributes which can be effectively protected if other people use them. This means avoiding descriptive or laudatory terms (or having a professional help to add distinctive elements to make them unique).
Working with professionals to register trademarks ensures they’re strong and enforceable from the outset.
3. Making your mark with sound IP strategy
Registering your trademark should be the starting pistol that marks the start of the race to grow your brand. Often self-filers don’t realise this and forget that trademarks should be part of a long-term strategy.
Trademarks are geographical rights. This means one of the main concerns is where you need to be protected first – and where you will need to be protected in 5 years. Professionals can help you work this out and also put you in essential contact with agents so you can register in places you’re growing business into.
Professionals can also make sure you register your marks in the most useful classifications. There are 45 distinct types of good or services you can protect your mark in. Often self-filers only register in the class related to their main product or service (and forget about others ones until its too late). Professional guidance helps ensure you’re protected for all of your business needs.
4. The real cost of self-filing
Yes, registering a trademark properly costs more than doing it yourself. But, you should ask yourself; “can I afford to not do this properly?” Aside from the crucial reasons above – it often simply ends up costing more in the long-run to go it alone.
If you self-file a trademark that is invalidated you do not recover your registration fee (£700 in the UK). Note: the IPO often communicates to others with similar marks to see if they wish to contest new registrations. Aside from a comprehensive clearance search, any IP solicitor worth their salt will cover your registration through indemnity insurance, should the mark fail to be registered.
Good trademark registration services (including our own) also run on a fixed fee basis – meaning the entire registration process comes to a known amount. On the other hand, professional advice and managing marks filed badly to begin with – will often put you in the position of paying hourly rates indefinitely to fix things.
It’s honestly not worth the risk.
We understand it can be tempting to take the DIY approach. Time-after-time however; you run the risk of doing serious and ongoing damage to your business’ future prospects (or cash reserves). Just like building a house – sometimes you just need to call in the professionals.
So if you’re looking to register a trademark and happen to be reading this… please take a second to think if you’re absolutely sure about it. And if there are any lingering questions or doubts – feel free to give us a call. We’re more than happy to help.
So, “how do I register a trademark”? With all due respect, please, please, please – let us help!
For more info, or to speak to our award-winning intellectual property solicitors, call:
0113 237 9900
“How do I register a trademark”, articles by Martin Hendry and Matthew Lingard