Not all registered trade marks are equal. Despite being registered many trade marks in legal terms are of poor quality. They are of little legal value because they create little monopoly that can stop others using similar names or other brand elements (logo styles, label designs etc).

Unfortunately many people who do trade mark work do little more than take instructions and file, applying little search and strategy work. Our practice is to carefully review whether a proposed filing has legal value.

To register a legally valuable trade mark, as a general guide, be inventive, seek distinctive marks and stay away from:

• • Descriptive words in the dictionary, eg seeking to register ECOMMERCE EXPERT for an ecommerce software system
  • Surnames
  • Geographical names, eg Australia
  • Really long names (the longer the name, the easier is for others to use parts of it without breaching rights)
  • Long-winded slogans (again, the longer the slogan the easiser it is for others to get around)
  • Using “A” or “The” as the first word of the mark (they lengthen the identity, have next to no legal value, and hardly distinguish you)
  • Generic under-designed logos (the more generic a design, the more likely others have already used it, and can use it again)
    

Securing a high quality trade mark begins with name selection based on knowledge of your target market.

1. 1. We can brainstorm your selection of a name.
   2. We’ll then do a professional name availability search investigating Australian and overseas trade marks, domains, business and company names, social media handles and brands.
   3. If that search landscape is clear, we’ll prepare descriptions of your goods and services (customised for your market) and select appropriate trade mark classes (there are 45 to select from).
   4. We’ll then advise on who should be the owner and applicant.

Finally, we’ll file the application and monitor it through the examination, any opposition and the final registration stage. All up you receive a registration as well as legal design – a brand strategy with armour against potential competitors, pirates and other infringers of your property rights.

Firstly, a quality registration is an investment minimizing the longer term cost of legally defending a mark to maintain a monopoly.

Secondly, we apply what we term as “legal design” to minimize examiner objections or third party oppositions. You may use a graphic designer to draft your logo or product label. We can provide a draft Design Brief with instructions for the designer so that the design work is legally informed before it is prepared.

The weaknesses of a do-it-yourself trade mark registration is apparent often only years later when it is realised that its lack of “legal design” provides little scope to assert a legal monopoly. The tell tale signs of a do-it-yourself trade mark registration is obvious to experienced trade mark lawyers and attorneys.

The most valuable legal work for a trade mark application involves assessing and settling on answers to three questions or variables.

• • What to register? For this consider the advantages and disadvantages of these options – a word mark, logo, label, tag line, or composite mark.
  • How to register? For this consider the wording of the trade mark goods and services descriptions and select the appropriate trade mark classes within which to apply.
  • Who is to be the owner? For this consider if the owner of the trade mark should be the operating entity, a separate non-trading intellectual property holding company, or other entity.

Each of the follow mistakes weaken the legal quality of a registered trade mark, ie limit the scope of legal rights and the mark’s legal monopoly:

1. Poorly selected mark (see prior Q&A question for marks to generally avoid)
2. Limited or minuscule description of goods or services (this is a very common weakness for which many lawyers are also responsible)
3. Wrong trade mark owner as the applicant (eg mark in the name of a company when it should be in the name of another owner)
4. Registered mark is not exactly what is in actual use on a website, stationary, brochures, email signature blocks etc.

It depends. Generally, a word mark registration is better, providing the potential for a greater monopoly.

However, a word is usually more difficult to register. Call now for a complementary discussion on what will work best in your situation.

Ten months from application to registration is a common period. That is for an application with no examiner’s rejection or third party opposition.

Registration lasts for 10 years, after which an additional official fee is required for renewal every 10 years.

Based on how extensively you’ve used the mark, it may be possible to contest a trade mark examiner’s rejection.

We are good at drafting evidence-based documentary responses to change an examiner’s mind.

Speak to us today and see whether we can help you salvage your trade mark application.

Trade mark registrations are jurisdiction-specific.

• • File for registration first in Australia and use that base registration to apply to secure registration via the World Intellectual Property Organisation (WIPO).
  • If only a few or small number of countries are targeted it may be more economical to use attorneys in those jurisdictions.
  • Be warned, obtaining trade mark registrations abroad involves significant cost and involves complexity.

Speak to us to first develop a cost-effective trade mark filing strategy.