Showing posts with label trademark registry. Show all posts
Showing posts with label trademark registry. Show all posts

Tuesday, 26 January 2010

UK Trademark Registration - Step by Step Guide

We make trademark registration simple and affordable.

Step 1

You submit your details to us together with a description of your intended trademark via the Register Your Trademark link

Step 2

One of our IP team will contact you usually within 3 to 24 (working) hours to discuss your application and provide the necessary advice and cost estimate.

Step 3

In most cases we would advise you to undertake a thorough search against your intended trademark. If you decide to use our Premium Search services for these purposes, then as soon as we have received and confirmed your instructions as correct we will ask you to submit a payment on account to cover our search fees. Once the payment has been received your instructions will be forwarded to one of our IP team for processing. Once we have completed a full and detailed search against your intended mark we will forward a report of our findings to you. This usually takes about 10 working days.

Step 4

Depending upon the outcome of any search report, if you then decide to proceed with our Trademark Registration services, then following receipt of your instructions we will contact you to:

  • check and confirm your instructions;
  • supply you with a copy of the terms and conditions which will govern our supply of services (and we will ask you to confirm your acceptance of these);
  • we will request a payment on account to cover our fees and the registry fees.

Step 5

Upon confirmation of your initial instructions and receipt of your acceptance of our terms and conditions, together with receipt of the payment on account your instructions we will:

  • send you a trademark specification sheet setting out the particular classes of goods / services against which you have chosen to register your trademark; and
  • once you have confirmed your agreement to the wording of the application the IP team will then prepare and file your application together with the relevant fee at the Trademark Registry.

Step 6

You should expect the Trademark Registry to issue its examination report within approximately 2 months following submission of your application form. We will notify you as soon as we receive this report. The examiner can refuse registration if he considers that your mark is not sufficiently distinctive. However, he will not refuse your mark simply because of an earlier conflicting mark, unless the owner of that mark has successfully opposed your application. If the examiner considers that there may be potential earlier conflicting marks already on the register, you will then have the choice of:

  • either continuing with your application as it stands; or
  • trying to avoid the potential conflict by restricting the list of goods and services to which your application relates (i.e. limiting the classes); or
  • agreeing to withdraw your application.

If you choose to proceed with an application where the examiner has raised the potential of conflicts with earlier marks then the examiner will notify the holders of the earlier marks of this fact and it will be left to the discretion of those notified mark holders (or other third party objectors) as to whether they will oppose your application. This is why undertaking a Premium Search service can be so important.

Step 7

If your mark has not been rejected by the Trademark Registry you can expect it to be published in the Trademark Journal approximately 3 weeks after the examination report has been issued. If the Trademark Registry receives no opposition to your mark within 3 months of the date of publication they will then issue you with a trademark certificate. We will notify you as soon as the certificate is issued.

Tuesday, 13 October 2009

Is my Trade Mark too descriptive?

Trademarks which describe the goods or services that they're aiming to promote will not be accepted by the Trademark Registry if they do not offer any distinction.


What does this mean?

It means that you cannot claim the rights to a word or phrase which is commonly used to promote goods or services which are similar to your own.

Some examples of trademarks that would typically be rejected by the registry on distinctive grounds would be:-


24hrsAday - Many traders advertise their goods or services as 24 hours a day. This mark would be instantly rejected as it means that the owner of the mark would be able to claim rights over all traders using this common phrase.


MeatyButchers - If you are trading as a butcher, these two words simply the type of goods that you are selling. Joining the two words together to make a new word would not make this mark acceptable.

PHONES direct - 'Direct' describes goods or services sold directly to the public and is widely used by traders. 'Phones' doesn't add any more distinction to the mark as, again, it's describing what the mark is being used to promote.

The one 4 you - Slogans like this are commonly used in trade and are therefore, not distinctive. Using the number ''4'' instead of the word ''for'' does not add more distinction as it sounds the same as the word it represents.


What can I do to make my mark more distinctive?

If you're already using a descriptive mark to promote your goods/services, ways of adding distinction can include:-

  • Using ''Made-Up'' words (i.e. words that don't already exist)
  • Adding a logo - A well-conceived logo can give your mark added distinction, although note that this will, of course, limit the scope of your protection (i.e. you will be restricted to using the logo to safely promote your goods/services)
  • Picking a word that has no relevance to the goods or services you're selling... i.e. ''Doors'' if you're planning to use the mark to promote watches. Doors is a commonly used word, but it isn't related in any way to 'watches'.
Common Misconceptions

The registry may reject words or logos that are unlikely to be conceived as a trademark by the public because they are:-
  • Misspelt words such as 'nite' or 'fone'
  • In Colour
  • In a different typeface or font
  • Displayed as an internet domain with ''.com'' or ''.co.uk'', etc.
  • Words which are joined together to create a new word such as PHONESHOP
  • A combination of any of the above.
Need to check if your mark is too descriptive? Get some free trademark advice today.

Happy that your mark is distinctive enough? Make sure it isn't already registered with our Free Trademark Search facility.

If you've checked both of the above, then you can proceed straight to Trademark Registration.



 
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