Seven tips to get a cost-efficient trade mark
Our top seven tips to registering your trade mark without breaking the bank.
Intellectual property is so often recognised as one of a company’s most valuable assets. However as an intangible asset for a smaller or newer company, it might not seem worth being a priority spend.
The value of obtaining a trade mark registration sooner rather than later to protect the hard work that will go into developing your brand is however imperative.
Register your trade mark in a cost-effective way by using our seven tips:
1. Keep your list specific
When you start exploring trade mark protection it will quickly become clear that whatever you wish to trade mark will have to be registered in relation to specific goods and/or services.
It may be tempting to claim all goods and services possible. However not only could this lead to issues down the line, but if you do not use the trade mark on all of those goods or services, getting your initial trade mark registration and the cost of doing this, could also raise a whole host of issues at examination.
When the examiner looks at the goods and services applied for, they will likely ask questions and want to re-assign goods and services, all potentially increasing both time and monetary cost.
2. Only apply for current/foreseeable future use
On a similar point, whilst you might have ideas of world domination and being the next super-brand, and whilst there is nothing wrong with this, more classes = more money. Classes are the categories that goods and services are divided up into, there are 45 classes in total.
It is advisable to cover all current and foreseeable future use, but in terms of being cost-efficient, best to be realistic.
3. Look at your options
If your mark seems descriptive or to relate to characteristics of the goods or services applied for, consider a logo
Trade Mark applications undergo examination once filed and if the mark is considered to describe the goods or services applied for or relate to their characteristics, the application will be refused by the examiner, leading to wasted money if you cannot successfully argue against such refusal.
If in doubt, a logo with stylisation can help, provided there are actual stylised elements, i.e. more than just using a specific font, it can add “character” to the mark to help make it registrable and give a smoother (more cost-effective) route to registration.
4. Consider series marks
At the UK Intellectual Property Office (UK IPO) you can apply for what is called a “series” mark. You can apply for this type of mark to include multiple variations of a mark, up to six variants, so long as those variants do not differ dramatically in their overall appearance, i.e. you could apply for one logo in five different colours.
When you apply for over two marks in the series, the cost increases slightly with every extraversion of the mark applied for but is still cheaper than five separate applications.
5. Do your research and search, search, search
The UK trade mark register is publicly accessible, there are various ways to search it, but if you have an idea for a mark, it might be wise to pop it into the “search by keyword, phrase or image option” and see if there are any identical or even similar marks already registered.
A trade mark attorney can conduct or advise on more thorough searching options which would provide you with more certainty and professional opinion.
However at a minimum the above will be helpful and might avoid wasted cost if you see there is an identical mark already out there, you might be likely to face opposition so you could save yourself time and money.
See the UK register here.
6. Have the registered owner clearly set up in advance
It is always a good idea to know exactly who you want to own the trade mark - is it yourself personally, your company, a parent company, subsidiary?
Once you have filed the application with a person or company listed as the applicant, if you decide later the trade mark should actually be owned differently as an asset, then you will have to assign this, which will incur further costs and may have easily been avoided.
7. Use a Chartered Trade Mark Attorney
This may sound like self-promotion, but there are statistics which support this, Robert Reading, IP group at Clarivate, has identified that represented trade mark applications at the UK IPO have a success rate of reaching registration four times that of a self-filed application, thus saving the potential of wasted money overall;
We are always happy to chat, even for an initial cost-free conversation and can help navigate and avoid unnecessary costs.
Author
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Suzan Moss
Chartered Trade Mark Attorney, HGF Limited