When you are in the process of launching a service, a product or building a brand, you have to think about protecting your brand name. Registering a trademark is often not something that we want to think about, however, to give it thought early on is paramount.
In this article, I will briefly explain the basics of what trademarks are, why trademarks are important to you and your business and the kind of options and associated steps are relevant for your business. I have received several casual questions from people who are launching products, and I thought that this was a good time to shed some light on this topic.
Important: The content on in this article or on Tropical U.P in general, can’t be considered as legal advice. I am not a trademark attorney nor am I qualified to give professional legal consultation. The content in this post can merely serve as guidance for your business before you take any further actions you should always consult with a qualified professional.
What is a Trademark?
A trademark is a symbol, word or name that is legally registered to represent a company or a product/service. A trademark allows you to protect your brand name and image from competitors that infringe your rights to your brand image.
A trademark should not be confused with copyright or a patent. Copyright is what see on the bottom of most blogs, and means that all the content belongs to the website and the author(s). A patent is the ownership and property of an invention.
Why should a Trademark matter to you?
As mentioned above a trademark helps you to protect your brand from trademark infringements. Other people are not allowed to represent themselves similar to your name to cause confusion to your clients or customers. Competitors are also not authorized to provide with similar looking products and services, hoping that confused customers choose their products or services over yours.
Now to make this easier to comprehend let’s refer to an example. Let’s say you own a beverage company called Coca-Cola, you have registered a trademark for the logo, name and the famous red can with white letters. Now if a competitor wanted to launch a similar beverage also in a red can, with white letters that would say Coka-Cola they would not be allowed to. The small difference in the name and image of the brand easily has customers confuse the two brands and thus allows your competitor to potential have a benefit over this confusion.
What are your options?
The first and foremost thing you should do is to ensure is that the name and the logo that you are planning on using are still available. Registration databases vary per country, USPTO for the US and the OHIM for Europe. You can search their databases for companies using a similar name and that are in the same industry.
It is possible that your desired name is already in use by a different company. However, this does not automatically mean that you can’t use the name that you want. Important here the class, the trademark, and company, operate in. Say you are looking to have a beverage company and another company already has a trademark registered with your desired name, but they work in chemicals, this should not cause major problems for your registration.
The classes in which the registered trademark operates in are the key to being or not being able to have a trademark registered. If the classes are somewhat similar, and the name and design look similar, it is much harder to have your trademark registered, the less overlap, the better.
How to register a trademark?
Once you have done some research yourself, and you have found you have a chance, you can move to the next step. There are several ways to register a trademark but in general, there are similar measures involved. The first choice you have to make is if you want to work with a third party or if you wish to do everything by yourself.
Working with a third party is, of course, more expensive but they have more experience to guide you through the process and to make recommendations based on trademarks already registered. A professional can help you to acquire a trademark that seemed impossible to get. If you are looking to work with a third party, look for parties that have a no cure no pay policy, no trademark equals no invoice.
You can also choose to register the trademark by yourself. You will save some money, and this approach could be suitable if you have a unique name and if you only want to register in just a (small) country. In this case, the entire process should be straightforward, and you might be able to do it yourself.
When registering a trademark there are some general steps and procedures you need to go through:
Step 1: Market Research
In this step, you or the third party conducts a market research. In this market research, other similar trademarks are identified and the similarities that they share with your desired trademark. As aforementioned the similarities in classes are imperative and make or break a trademark case.
Once the outcome of the market research is positive, you can move to the next step.
Step 2: Filing
In this step the trademark will be filled at the relevant institution, this depends on where you want to enforce your trademark in the future. For example, a Dutch company has the possibility to file their trademark in BeNeLux (Belgium, Netherlands and Luxemburg), Europe and a custom selection of countries internationally.
What works for your desired trademark depends on where you want to be active in the future and depends on your market research for those respective areas.
As soon as your trademark is filled you can exercise ownership of your trademark, note that the rights of ownership at this point are temporarily pending your application.
Step 3: Publication
Your application will receive a deposit and case number and will be made public in the databases of the institution(s) that you have filled your trademark. The government organization will also check your trademark registration for possible legal violations.
Technically the governing body could refuse your application at this point and that you are required to make further changes. Once the government institution has approved your application, you will proceed to the next step.
Step 4: Opposition
The fourth step is a step that you have no control over. Once the trademark is published, opposing companies have the right to file for objection against your application. This opposition period usually lasts for 2-3 months, depending on where you file for your trademark.
When opposing companies object your application, you could be forced to make small changes in the classes of your trademark or the design of your logo. Risks here can be mitigated by ensuring that the prior market research you did in step 1 was diligent and that you specify your classes as precise as possible.
Step 5: Registration
Once the opposition period has finished the trademark is yours. You will receive a certificate that allows you to enforce your trademark in the future, and you are allowed to exercise definitely all ownership rights.
A trademark, just like other intellectual property rights, is a right that you need to enforce. In other words, you need to object other companies violating your rights or opposing you in a trademark application. You could work with a third party to ensure brand protection in the future.
Registering as a trademark can seem like a tedious process but is critical for the future of your brand and business. Trademark registration is not necessary for all types of business but if you are launching a distinctive service or a physical product, it could smart to register for a trademark.
I would advise working with a third party that has experience with filing for trademarks. It takes away a lot of the stress and if they know what they are doing it saves you both time and a headache. Good luck with your trademark registration or with making the decision whether you should file for a trademark or not. Stay awesome and looking forward to your next visit!