1) Registering your trademark in the wrong class
The trademark authorities regularly update the class classifications since new products and services are being introduced into the marketplace all of the time. Therefore, before registering your brand you need to decide what products you want to register it for and then find out what classes they come under. For example if you wanted to register a clothing brand in the UK you would need to register your trademark in class 25. Here is a list of the classes for UK trademark registration.
2) Not completing a comprehensive trademark search
Before applying for a trademark you should always complete a comprehensive trademark search focusing on the classes of the goods and services that you would be selling. This is an essential part of the process because if a competitor has already registered the trademark then you can go away and choose a different name. However, if you were to try to register the trademark and a similar trademark already existed, your application would be refused and you would lose the cost of the registration fees and have to begin the process from scratch.
3) Choosing a weak name
There are 5 types of name that you can choose for a trademark: generic, descriptive, suggestive, arbitrary and fanciful. The strongest of these and the least likely to be contested is a “fanciful” name. This would be a made up name that bore no resemblance to the name or a description of the goods or services, for example “Kodak”. The second strongest of these would be an “arbitrary” name such as “Dove”, which is used for soaps and has nothing to do with the bird. Suggestive, descriptive and generic marks are weaker and although they can be used they do not provide as much protection for your brand. In fact, many trademark authorities refuse to grant trademarks for generic and descriptive names stating that they would cause confusion in the marketplace.
4) Not enforcing your trademark rights
A company with a trademark should always be on the lookout for potential infringement and those who may be trying to boost their profits at the expense of others. A good example of this is the Avery case (link to our article). Unauthorised online advertisers had been using the brand of the Avery Dennison Corporation to boost their own profits and were costing them thousands of pounds every year. When the company discovered this however, they immediately took action to enforce their trademark rights.
5) Using your trademark outside of its designated territory
You may think that because you now have the trademark for your brand that you can do business in any location. This is not true. You can only use your trademark in the geographical area that you have registered it under. Therefore if you have registered your trademark in the UK your brand is not protected to launch your product into the rest of Europe until you have you have a European trademark.
6) Forgetting to renew your trademark
A trademark only lasts for 10 years and in order to continue to have the same rights and protection you would need to renew it. You would be sent a renewal reminder 3 months before the trademark’s expiry date and you would have a six month grace period in which you can renew your trademark. During that time another company can legally apply for that trademark even if your company are still using it. Therefore, it is best to keep track of your trademark’s expiry date so that you can take the necessary action when the time comes.
For advice and more information on searching, acquiring, registering and enforcing Trademarks please visit our website, http://www.lipex.com.
Our unique database of trademarks for sale or license could save you time and help protect your brand.
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