By Simon Davies
A strong brand identity is one of the most valuable assets a business can build; Protecting it is crucial to ensuring the longevity and success of any venture. Yet many small businesses overlook a crucial first step in securing their brand: trademarks.
What is a trademark?
A trademark, which can be a word, phrase, symbol or design, provides brand equity for your company. It is basically a business’ identity, used to distinguish its goods or services from those of its competitors. Registered trademarks can be identified by the abbreviation ™ in the process of registration, or ® once the registration has been accepted. It signals to all potential competitors that your brand has official legal protection.
There are three main kinds of intellectual property protection: trademarks, copyright and patents. A trademark differs from a copyright in that a trademark helps define a company brand, whereas a copyright is geared toward protection of literary, artistic and dramatic works. While a patent is the grant of a property right to the inventor of a product or process.
All three protective laws can be required for a single business endeavour. For example, a marketing campaign for a new product may introduce a new slogan for use with the product, which also appears in advertisements. The advertisement’s text and graphics will be covered by copyright and the slogan by trademark law. The product itself will require a patent.
Some trademarks are considered unacceptable, owing to protection under international agreements, like Article 6_ter_ of the Paris Convention for the Protection of Industrial Property. It prevents registration of trademarks that are similar to flags or other state emblems, hallmarks, and abbreviations or names of international intergovernmental organisations.
Why do I need to register my trademark?
If you don’t register your trademark, it means someone else can. This immediately puts your business and any product or service development you are undertaking at risk. As your product or service becomes successful, the trademark itself starts to develop an intrinsic value. Business investors will often assess whether you have taken the appropriate legal trademark protection to secure your brand.
Once a trademark has been registered, legal action can be taken if there is an infringement within the country where the trade mark is registered. Although some countries do recognise common-law trademark rights, meaning legal action may be taken if an unregistered trademark has a considerable reputation. These common-law actions are often expensive and the outcome is uncertain. Relying on a registered trademark therefore has numerous legal and financial advantages.
Being the owner of a registered trademark does not automatically entitle you to use that mark as a domain name, as the same trademark can be registered for different goods or services and by different proprietors. It’s therefore possible- though highly undesirable- that someone may register a domain name which shares the name of a pre-existing business. Domain name ownership and strategies are hugely important part of branding. Domain name marketers Novanym provide unique business names in the form of single word .com domains. Ownership of the name, logo and domain is a key part of their strategy, helping rebranding businesses to protect their success.
How do I register my trademark?
There are many key considerations to make when it comes to branding, but in terms of registering your company name, the most important thing to keep in mind is that not all words and names are capable of being protected as trademarks. They must not be generic or flatly descriptive, but rather suggestive (like Facebook, for example), can benefit from being arbitrary (eg. Apple) or even fanciful (think Xerox or Kodak).
One important thing business owners need to know is that you can only adopt a trademark if it is not “confusingly similar” to another trademark already registered within a similar classification. That means it’s important to check for trademark conflicts—ignorance is not a defense to trademark infringement. If a registered trademark already exists within the class you operate in, your trademark registration is likely to be rejected. One useful way to do so is using an online database like Trademark Eagle.
The trademark classification system is divided between goods (classes 1-34) and services (classes 35-45), so you may wish to use the classification search tool TMclass. Classifying your goods and/or service is also required to apply for trademark protection.
What about registering your trademark internationally?
Whether your business operates globally now, or intends to do so in the future, your trademark may be vulnerable overseas. Before the internet it didn’t matter so much, but because of the global nature of business today, the reach of the internet, online commerce and social media, a company or individual using your trademark overseas could be as damaging as someone opening a restaurant with the same name as yours just a little way down the road.
If you want to protect your trademark internationally, it must be registered in each country you wish to operate. You can apply to the Patent and Trademark Office in each country that is strategic to your business. Within the European Union, there also exists a Community Trademark.
There are also a number of countries which have signed-up to an international agreement called the ‘The Madrid Protocol’, enabling business to search and register trademarks internationally. Their website provides a list of member countries that an international application can cover. An international application must be based on an existing trade mark application or registration in one of the member countries.
Since your trademark is a registered name, you can’t usually translate it. This means that your trademark is only yours in the original language it was registered, regardless of the language of the country you are operating in. The exception is when the owner of the trademark registers translated versions of their company trademarked slogan or name. Professional translation companies like Global Voices offer advice on localising your brand, and can carry out intellectual property translations for patent litigation, as well as office actions, prior art and claims too.
Simon Davies is a freelance journalist interested in marketing, tech and small business. Follow him at @SimonTheoDavies.