Trama checklist: What are the key things to think about before registering a trademark

A brief summary of the key areas that should be considered prior to trademark registration, saving you time, money and effort.

By

Igor Demcak

#1 Which mark defines your brand?

Trademark registration provides a comprehensive protection of your intellectual property associated with the products / services offered. Its sole purpose is to protect the mark you actually use in business and hence, the very first question you should ask yourself is - what defines your brand? From our experience, most of the brands are characterised by a visual element - a logo. The remaining brands however rely solely on the use of a textual form of the mark. The difference in the trademark application process is twofold. First, since any trademark that is registered needs to meet the criteria of distinctiveness, it is the brand’s logo that often more feasible to successfully register. Secondly, in case the wording on your logo is distinctive enough to warrant a trademark, it can be used as the basis for brand protection against copycats that merely make modifications to the graphical identity of your brand. Conversely, if your trademark registration is filled for a textual element and you also use a graphical identity for your brand, this aspect of your brand remains unprotected. Overall, while there are numerous exceptions to this claim, most of our clients are recommended to register logo instead of a name of their brand as it is the graphical element that defines their brand in the eyes of the consumers.

#2 What types of products / services do you offer?

Nice Classification system used by the World Intellectual Property Organisation distinguishes a total of 45 categories of products (34) and services (11). Trademark protects your brand only in the selected product / service categories and hence, you should think carefully about the specific industry sectors in which you currently operate or plan to operate in the future. The cost of trademark registration is tied to the number of classes you select, encouraging you to define the product / service categories in an optimal way. This can be particularly challenging and team Trama is there to help you ease your decision making.

#3 Can your trademark be registered?

There are two principal aspects which influence the registrability of trademarks. First, any trademark that is registered needs to meet the criteria of an eligibility check which ensure that the mark is distinctive enough. In practical terms, a trademark that can be registered should not solely contain generic words (e.g. software) but should provide sufficient distinctiveness for your products / services. Easy tricks, such as translating the name into a foreign language, no longer work and hence, we strongly recommend to think about this aspect when deciding about your brand identity. The second aspect influencing the registrability of trademarks revolves around similarity screening, ensuring that your trademark is not in conflict with trademarks that have already been registered. Exact matches in the same categories of products / services effectively prevent most of trademark registration attempts and the same can be said about high levels of similarities with the existing trademarks.

#4 In which regions do you currently operate?

Trademark application needs to be submitted to a national intellectual property office, or in the case of the European Union, to the European Union Intellectual Property Office. The protection provided by a successful registration of a trademark is limited to the jurisdiction of the respective intellectual property office, meaning that if you had global ambitions, more than one application may be appropriate. The choice of the region in which you currently operate or plan to operate in the near future is therefore another key aspect of the trademark application. This consideration is of a particular relevance in the context of applying for a trademark in the US where the Intellectual Property Office requires the proof of use of the mark to be submitted as part of the application (or filed later for an extra fee). Similarly, in the European context, a considerable cost saving can be achieved if you apply for the European Union trademark from the very start for example and avoid excessive fees for trademark applications in individual European countries.

#5 Which option of registering a trademark should you follow?

There are several options that you can use to register a trademark, including doing it yourself, approaching an attorney, seeking the help of a trademark attorney or utilising a dedicated trademark service, such as Trama. The key differences between these options can be found in the level of risk, convenience and cost. On the one hand, the lowest cost is naturally associated with the do it yourself approach. This strategy however yields considerable risks in terms of the application being rejected or opposed. On the other hand, dedicated trademark attorneys can provide you with excellent guidance and for a considerable fee, your application for a trademark will be submitted in a stress-free way. 

Trama, a dedicated trademark registration and brand protection service, goes even further and provides its clients with a range of benefits, including low cost, free verification, simple process, money-back guarantee on successful registration and dedicated expert support. The choice is however always yours to make.

#6 Are you prepared to make the most out of your trademark? 

Once you have successfully submitted your application for a trademark registration, it is time to start thinking about the ways to enact this level of protection. The intellectual property office is not primarily concerned with the conflicts between new applicants and existing trademarks, placing this responsibility on the respective owners of the registered trademarks. As a result, one of the key processes in maximising the value of your trademark is to continuously monitor new applications submitted to the intellectual property office and raise oppositions for any trademarks that are similar and may therefore impede your market position. Similarly, although the mere existence of a registered trademark often acts as a deterrent to copycat attempts, you may need to issue cease and desist letters or pursue infringement actions in order to enact this level of brand protection. Team Trama is always there to support you and our services include active trademark infringement monitoring as well as conflict resolution.

Igor Demcak

Igor Demcak

Trademark Attorney

Filed over 150 trademarks as a trademark attorney

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