How (and When) to Register a Trademark Without Hiccups

This is a guest contribution from Jeanette Jifkins of Onyx Online Law,

The best brand name in the world isn’t worth anything unless it helps you make money. So why would you trade mark your name before you even know if you have a business?

If you talk to lawyer who spends their working life immersed in IP law (intellectual property law), they usually want you to register your trade mark without delay.

Let’s be practical here.

If you’re starting a business, the best place to start is making money.

If you’re not making money, doing business is going to be hard work and not a lot of fun.  Registering a trade mark is probably not your best top priority!

Here’s some food for thought:

• November 2001 – Facebook registered as a trade mark in France / EU
• February 2004 – Facebook (as we know it) launched
• August 2005 – Facebook registered as a trade mark in Canada
• February 2006 – Facebook trade mark registered in Australia
• May 2009 – Facebook trade mark registered in South Africa
• November 2011 – Facebook trade mark registered in the United States

Your brand protection can be a gradual process.  So where do you start when trying to decide “To register, or not to register?”.

Step 1: Is your brand capable of trade mark protection?

Huh? Let me explain.

If commonly used words and expressions were capable of trade mark protection, there would be a lot of businesses unable to explain what they do.  If you could trade mark words like ‘bakery’ or ‘auto-repair’ or ‘blogger’ then other people doing the same thing would not be able to use those words in business and we’d all end up in a pickle.

Some general rules are:

• You can’t trade mark a protected term, like ‘Olympics’
• You can’t trade mark commonly used terms that other people in the same business are likely to want to use (a recent Australian case said a cemetery trust could not trade mark ‘Memorials@Home’ because any business providing services for the families of deceased relatives might want to use the expression ‘memorials at home’ in describing their services.)
• You can’t trade mark purely descriptive or geographic terms, like ‘New York Deli’ because there is nothing distinctive in the name that would differentiate any one deli in New York from any other deli in New York

So, what you can do is use a common word or phrase to differentiate a product or service from other businesses in the same industry where that would be unusual, like:

Apple for computers

Jockey for underwear

Miller for beer, and

Puma for shoes

There are also times where a word that started as a trade mark has become a commonly understood term and is no longer capable of protection. Words that have become synonymous with what they are, like:

• Post-it notes
• Jacuzzi
• Band-Aid
• Mumpreneur.

One of my accountant friends rang me the other day and said his client had applied to register a trade mark and been knocked back, and asked if I could help. Unfortunately, the name they tried to register was along the lines of ‘<town name> auto repairs’, which is why it did not get through examination.

So, once you think you have something that can be registered, what next?

Step 2: Does your brand have value?

Not every brand name makes a difference to how much money the business can make. It depends upon how you are set up and what you do with your business.

Think about what your raving fans, followers or customers are going to look for when they search for you.

If people follow you based on your name, then your name will have more value than a brand name.

If people find you based on your product or service, and your brand does actually differentiate you from the competition, then there might be value worth protecting in your brand.

Whatever avenue people use to find you is where you have greater value. ProBlogger is a great example. Some people will be looking for Darren Rowse, other people will be looking for ProBlogger.

As bloggers, your personal identity might be what attracts your audience rather than the business you are building. So before racing out and registering anything, think about where the value lies.

Step 3: Is there anyone else out there using your brand, or likely to?

What is your risk, really?

Back in 2011 a client of mine had a domain name that included the brand name of a product they sold. The brand name was registered in the United Kingdom as a trade mark of their supplier.

So far, so good.

Unfortunately, there was also a United States based supplier with the same brand name registered as a trade mark there. The US company came to Australia in 2013 and registered the trade mark without the knowledge of my client or their UK supplier. They then pursued my client for breach of trade mark.

Leaving aside all the technical legal arguments that were open to my client, we looked at the business from a practical perspective.

Sure, my client could have spent $150,000 and three years in court proceedings to prove their entitlement, but when we looked at the business, all the customers came through the email list and not through the website.

The customers were interested in the product, but the business came through their relationship with my client.

So we rebranded the business and trade marked the new brand, had a new website built with a domain name that didn’t include a trade mark and transferred all the customers over to the rebranded business within 90 days.

My client kept the business, protected it for the future and didn’t spend a fortune of time or money in legal dispute. We even had the US company buy the domain name for $3,000.

In that case, if my client had registered the brand as a trade mark in Australia, knowing it was registered elsewhere in the world, they would not have had to rebrand and may even have had an offer to licence or purchase the use of that brand by the US company.

Look around!

Is there anyone else in the world using a brand or trade mark similar to yours, in the same industry?

If there is someone out there, what are the chance they, or someone else, wants to bring that business to your country? 

Step 4: Is there any other form of protection in place?

Many people don’t realise that a stylised design might already have copyright protection. Copyright protection is automatic on the creation of something creative. So a logo or design could already have copyright protection.

The creative input into the logo doesn’t have to be extensive, but it does have to be more than your business name in a font that can easily be downloaded by anyone, no matter what colour you make it.

The ProBlogger ‘P’ in a circle has enough creativity to it to be capable of copyright protection, which does not have to be registered. That logo is also capable of trade mark protection.

Step 5: Is now the right time?

There is so much to do in your business every day and trade mark registration can take months. If you are interested in protecting your trade mark, but just not organised to go through the process yet, consider putting ^TM after your brand name or logo. You can use the ^TM symbol before you register a trade mark and the ® symbol after you have it registered.

The ^TM symbol lets people know that you do intend to take action to protect your trade mark. The ® lets people know your trade mark is actually registered. Once your trade mark is so well known that no one would try and use it (like Google and Facebook) then you don’t need to put anything with it at all!

Jeanette Jifkins is the founder and Principal of Onyx Online Law, an Australian based law firm with the focus of supporting businesses with an online presence. Read more about using trade marks online here.