Why bother to get a trade mark registrable name for your business?

Written with:Stobbs logo

Protecting IP in the metaverse

The UK Intellectual Property Office (UKIPO) has issued new guidance on applying to trademark non-fungible tokens (NFTs) and virtual goods/services, clarifying the classifications and terminology to use.

Businesses looking to protect their intellectual property in a fast-moving digital landscape can read the full guidance here.

We collaborated with Stobbs IP's Emma Reeve on this guide. Emma frequently advises small businesses on how to get this process right – and teaches them the point of doing so. She advises Farillio and we've worked with her before as well, so we know just how valuable and pragmatic her advice is.

Getting a trade mark registrable name for your business can be easy! Just follow the simple steps set out in this guide.

Questions we answer in this guide

  • What should you do before you apply for a trade mark?
  • How do you decide what you want to apply your trade mark to?
  • How to make the most of your trade mark and enforce it, if you need to?

But why should you do it in the first place?

Your name is your brand. Why let anyone free ride on it?

Your name is your brand. Or at least a big part of it. It's often the first moment that someone recognises your business and it's part of what makes you stand out.

This is where trade marks have real worth.

Protection makes commercial sense. And it's simple, inexpensive and robust.

Creating a brand that has meaning, resonates with your intended consumer, and is scalable outside of your original market, is often vital for any business. Take a look at our guide: why should I care about brand, if you need to be convinced about the real commercial value to your business of taking branding seriously.

However, even if you're already convinced that branding matters, many businesses often neglect the added necessity of ensuring that their brand name is enforceable and protectable as a trade mark. What's the point of creating something that makes you identifiable, if you're not going to stop others from imitating, free-riding on or parodying your efforts and investment?

Trade marks act as a badge of origin and can be used as a remarkably effective tool to stop other people from using your brand for identical or similar goods and services, and/or from passing themselves off as you to unwitting consumers, who may otherwise believe they're buying from you.

Registering a trade mark gives you the exclusive right to use that trade mark for the goods and/or services that it covers. Having the trade mark allows you to stop other people from using a similar trade mark in a similar business area without your permission.

A registered trade mark can protect any sign that represents your business and gives you legal protection for your brand. Any sign includes words, logos, music and colours: if it represents your business, it may be registrable.

Before you apply

Tips for choosing a business name

1. Do your research

Check the trade mark you intend to use hasn't already been registered with the UK's Trade Mark Registry (held at the Intellectual Property Office) - and the registries of anywhere else that you intend to register it.

Even if you decide not to apply for a trade mark you should still search to check that someone else isn't already using your brand name, to avoid being challenged for infringement by them when you do start to use it.

And it's not just the Intellectual Property Office's register that you need to check. You should also check the following sources:

a. Google, and/or other internet search providers. The IPO register will only show up registered trade marks. While it's not a great business practice, there may be plenty of businesses with similar business names to your intended name, selling similar goods or services, without a trade mark registration in place. If you set up and there's a name conflict, they may come after you with a passing off action.

b. Online dictionaries and definition providers. Make sure your name is appropriate and doesn't have a meaning you never expected and would not want to be associated with!

c. Social media channels and sites. This will identify any use of your intended trade mark by a third party who may have built up a goodwill in it. A hashtag, for example, is just as capable of generating an unregistered trade mark status and sufficient goodwill for it to be a problem.

How to choose a protectable business name

2. Decide what type of trade mark to apply for

If you're focusing on a word mark, e.g. the word name of your business, there are rules and limitations on what you can use.

Make sure to choose a trade mark that doesn't just generically describe the goods or services of your business, e.g. 'Dance Shoes'.

It must also be distinctive, meaning that it can be owned as a brand. For instance, third parties should be able to use words such as 'best' or 'premium' to describe their goods or services. Therefore, it would be difficult to obtain a monopoly in these trade marks, without demonstrating significant use.

If it purely describes the goods and services and is not distinctive your trade mark application is likely to be refused.

Do you use a brand logo as well? Or a stylised version of your business name? Do you have a slogan? If you use any of these or are planning to do so, these may also be capable of registration and protection as trade marks. You'll need to do the same sort of checks on these as those recommended at (1) above as well.

3. Decide on the products and services to which you want your mark to apply

Trade marks are registered specifically in relation to distinct categories of products, services or other activities. You'll need to choose which ones you want your trade mark protection to extend to.

There's a balance to be struck here between casting your net too wide, and paying for categories that aren't going to be wholly relevant now (if ever), to your business, and not missing a category, the omission of which could cost you dearly later on, if you don't have exclusivity for those areas and someone else beats you to it.

So, carefully consider what's best, taking account of your plans over the next 5 years, not just where your business is at today. It is not possible to add extra goods or services to an existing application later on.

This is the ideal point to validate your plans and the coverage you believe to be appropriate with a trade mark expert. They will often offer this assistance as part of an overall trade mark registration package.

We can rapidly connect you with one of our experts for some friendly help here. It made a difference to our peace of mind.

4. Decide in which countries and territories you want your protection to run

The costs of gaining worldwide protection is often prohibitive, even for large businesses, although there are treaties and conventions that group countries together and can make the application process a little more efficient and cost-effective.

Our experts advise that you focus on your business plan. In which countries and territories will you realistically be operating and/or selling in? Do you anticipate generating revenue from the sale of merchandise or licensed products that may travel even further?

How to apply

You can use our guide to registering a trade mark and our video tutorial for a detailed step-by-step account of what's involved in the application process. We've summarised the main elements here as well, for ease.

The trade mark registration application form

1. Complete a trade mark application form

A trade mark application form can be completed online and directly with the UK Intellectual Property Office.

Alternatively, for a small fee, you may want to contact a Chartered Trade Mark Attorney to complete the application on your behalf. Our experts can take care of this for you.

2. Wait for the application to be processed

Once an application is filed at the UK Intellectual Property Office, it is examined by an examination officer who will determine whether your trade mark is distinctive, does not purely describe the goods and services applied for, and is not a (prohibited) protected emblem or symbol.

The examiner will search for similar trade marks that are registered, or applied for, for similar goods or services. They then produces what's called an 'examination report' and sends it to you, usually within two months of you filing your application.

If your trade mark application meets the criteria and passes the examination period, it will then be published in an online journal for two months. (This period is extendable by one month, if someone files an objection or opposition to your application.)

Assuming your application is not objected to, or opposed, it will proceed to registration and you will receive your registration certificate within two weeks following the publication period.

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