Do I need to trademark my brand?

[MisterMusty]

Hi,

I'm launching a web-based business, expecting to start trading in 3 months, and had previously looked at having the trademarks registered. ie the company name, the logo and the design of the website.

After doing some initial research I was advised by a solicitor that he recommended startups don't bother with full trademarks at the outset - he then recommended I just have 'TM' next to the logo. I forget his rationale but he convinced me that I would be better to put it off and save the cash in the early days. I'm now wondering if I might be in any way exposed if I follow his advice.

Can I ask for your opinions please? Do people on here think it's important for a startup to protect its IP with proper trademark registration? Or is it OK to have 'TM' against your logo and wait for full protection.

Any pointers much appreciated.

 

[Christine Hough]

I think you need to be able to show you were using it in a dispute if csomeone else copies it. So the tm is useful because it shows that you consider this your trade mark.

But whether to register it depends on what you will do with it. If you are building a widespread brand then I would say go for it, but if it is a local hairdressers I doubt there is much call to register it.

Just think of what it is doing for your business and then decide.
When we started Hofnote we did register it because it was somehthing new and on the Internet. I was thrilled when I came across a general music thread saying.. 'I'm off to do my Hofnotes now' without any further explanation!

 

[VeryMark]

The first thing you should do before anything else is to check out that your identity is sufficiently free to use without obvious risk - see our factsheet Trade Mark & Marketing Clearance available here.

On more than one occasion I've had someone come to me and say, well, we started trading a little while ago and we've got our logo and stationery and advertising sorted and now we'd like to trademark …. and I've checked and said, well, I'm afraid somebody else already has that and you could be infringing.

And then there's been this anguished reaction: "But we've spent all this money!"

When you've checked out your identity, then you can decide what to protect and when and how much to spend, but protect your name first, it's the most important.

You shouldn't leave it too long though, because of the risk of someone else registering or of copying taking place before you are protected properly.

Registration of a name at Companies House or as a domain name gives no protection, it simply stops anybody registering the identical name in the same way.

Trade mark registration, however, protects all forms of commercial usage of a name, whether as a company name, business name, product name, shop name, domain name, website name, in fact any form of commercial activity under the same or similar name which may lead to confusion.

Usage alone of a business name or identity affords a certain amount of protection under the common law against 'passing off '. However, this is not only more limited in scope but legal actions for passing off tend to be both more expensive and more uncertain in outcome as well as requiring evidence of likely confusion.

On the other hand - unlike protection for passing off - trade mark registration not only gives immediate national coverage but it is not necessary to show that confusion is likely for trade mark infringement to be established in the case of identicality.

Accordingly, if for example you only trade in Cornwall but have your name as a registered trade mark, and someone else then starts up in Scotland using the same name for the same kind of goods/services as you have registered for, then they can be guilty of infringement even though the geographical separation means that there is no confusion.

Trade mark registration can thus be both a potent weapon and a strong shield to protect your business name and identity. It can also increase a business's value by strengthening its appeal to investors or licensees.

 

I agree with the advice from your solicitor. A small startup business should focus on cash flow and registering trade marks can be an expensive game if you use a trade mark attorney (you can do it cheaper yourself online IF you know what you are doing, but you're still talking £100s)

Using TM lets others know that you are using the mark/logo/word/image as a trade mark. You can only use ® when it is registered.

I used to work as a trade mark attorney and we had lots of clients that would get caught up in spending lots of money on trade marks when they didn't need to. You can always register the mark at a later date.

 

[KidsBeeHappy]

Firstly, back to basics. Is your name something that can be trademarked?
You can copywrite without trademark, and if your business name is something generic then chances of getting it trademarked could be low.

 

I agree Boxby, if MM wants a trade mark then one of the things to look at is whether the name can be trademaked. There are lots of things to consider, too many to go over here.

Copyright applies to literary and artistic works. So, whilst copyright may apply to a nicely designed logo it is unlikely to apply to a single word or short phrase because single word or short phrase is unlikely to be seen as a literary work.

 

[VeryMark]

Yes, the Exxon case decided that a name could not be the subject of copyright ........ you are assuming tho, Tony, that the OP will be a small business.

 

True, I am assuming that MM's business will initially be a small.

 

[VeryMark]

I have to say that, for all the SME's I've seen get into a mess and spend too much on trade mark registration, some of them wouldn't have if they'd chosen a better name in the first place, and I've seen just as many with a problem because they hadn't registered and weren't protected.

 

[strikingedge]

You don't need to use a solicitor or trademark attorney to trademark your name.

If you have a unique name, then the easiest process is to:
- search the trademark database to check it is unique
http://www.ipo.gov.uk/tm.htm

- search the trademark database for a competitor that has a trademark, and note down the classes and description they have used.

- amend your competitor's listing as required

- submit your trademark application online

If you get it slightly wrong (as I have done in the past), they're really good and will often give you a call to suggest amendments.

The cost starts at £200 plus £50 for each additional class you want to add.

 

[VeryMark]

That is true, except ....

.... I was asked for advice some while ago by a mobile phone retailer who was having problems with person who had registered their domain name for them.

They, the retailer, had registered their name themselves by trade mark registration, directly with the Intellectual Property Office, for mobile phones in Class 9, the class of the Trade Marks Register covering those products, by just paying the £200 official fee.

Simple, yes?

...... except that mobile phone retailing is an activity belonging to Class 35, whereas Class 9 is the class covering mobile phone producers like Noki who brand their own phones.

As a result, the mobile phone retailer concerned had obtained an invalid and worthless trade mark registration, without any idea that that was what they had done.

 

[strikingedge]

It comes as no surprise that a trade mark attorney thinks you should use a trade mark attorney ;-)

As a rule of thumb...if its a simple trade mark application, do it yourself. If its complicated, get expert advice - from the IPO (they give great phone advice) or....from a trade mark attorney.

 

[VeryMark]

I agree, of course, if you know exactly what to do ...

.... if you have a simple illness, you can treat yourself, if it's more complicated, speak to NHS Direct or ......... a doctor.

It's up to you.

Our website also has more free information than you will find from any other law firm.