One key moment for every brand-building process

Trademark search is one of the most important parts of the brand-building process, although sometimes it is underestimated.

Most people think about brand building only as a marketing process where different marketing specialists develop a new brand name based on a variety of marketing requirements. 

That’s true up to a point but it’s not the whole picture. Why?

Well, the brief answer is that a good brand name doesn’t mean automatically that you can use it without legal obstacles.

What do I mean?

Let’s say, for example, that we have a company that hires a brand-building agency to create a new brand name for its business. The agency does the job and delivers the required brand. From that point we have two possible scenarios:

1. The company applies for a trademark before the local Patent Office and the brand is registered as a trademark without problems. However, another option here is the brand to fail registration because there are identical and similar trademarks for the same name that are already registered by other companies.
2. The second scenario is if the company doesn’t care about the registration of a trademark in which case the company uses its brand seamlessly, relying on pure luck. In this case, however, it is possible for the company to be accused of a trademark infringement by an owner of a registered identical or similar trademark if such exist.

All of that can happen because there is no preliminary trademark search in the brand building stage which to show whether or not earlier registered trademark rights exist.

Although you can use your brand without registration as a trademark, sometimes this could be a risk because it can evoke potential legal conflicts. Even without such problems, the brand owner will be in a more difficult position to defend its brand against infringers in the future because of a lack of registration.

So taking into account these options, trademark search is a vital part of the brand-building process. If you implement such a search in every stage of the process, you will be able to avoid conflicts and reduce risk to your business. Such searches will “red flag” possible issues in the early stages of your business development, which will give you more time to react properly.

In case you are interested in learning how to do trademark searches on your own, check this new Udemy Complete course on trademark search, where you will learn how to implement it for the territories of the US, Canada, the UK, Ireland, Australia and New Zealand.

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5 key moments before to apply for trademark protection

Many people believe that the most important part when you want to register a trademark is the registration procedure before the Patent Office.

This is a wrong view for the most part. There are some crucial moments regarding every trademark protection that have to be taken into account even before filing an application. This can define to what extent you will be able to register and use your trademark successfully.

1. Define what type of trademark you want to register:
   • Word mark – in that case your mark will be registered only as a word. For example: NIKE.
   • Combined mark – this mark consists of both word and graphic parts. For example the Adidas’ mark:
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   • Figurative marks – they cover only graphics without text. For example:
   • 
   • Three-dimensional marks. They consist of the product’s forms. One of the most well-known examples of such a trademark is that of Coca Cola’s bottle:
   • 
   • Other trademark types such as sound marks, smell marks etc. Bear in mind that you can choose only one type of trademark in your application. If you want to register all of them you need to file separate applications.
2. Be sure that your sign is not excluded from trademark protection. Trademark law prohibits registration of signs that cannot serve as a source of trade origin. They can be:
   • clearly descriptive signs;
   • signs that are not distinctive;
   • deceptively misleading signs;
   • geographical places of origin of goods and services;
   • signs consisting of flags, arms and other official emblems of states or international organizations which are registered in accordance with Article 6 of the Paris Convention;
   • signs contrary to public policy or accepted principles of morality.
   • etc.
3. Define the classes of goods and services for which you want your trademark. Every trademark application includes a list of the so-called Nice Classes of goods and services. The scope of trademark protection is valid only for specified goods and services. This means that your monopoly over the sign is limited to those classes. One simple way for classification is to use the TM Class tool.
4. Do a preliminary trademark search. This is absolutely critical moment. You need to check the Patent Office’s trademark database whether there are identical or similar trademarks for the same classes of goods and services. If this is the case it could mean that third parties can oppose your trademark or even sue you for a trademark infringement in case you start using the mark.
5. Consult a registered Trademark Attorney. The legislation in most of the countries allows a trademark application to be filed personally by the applicant. This can save some money from attorney’s fees. However, this hides some traps. In case you don’t have the necessary legal knowledge of how to go through the registration procedure it can lead to a refusal or opposition against your trademark. From that perspective you can lose not only your application but to waste some money. So you need to think carefully to what extent you are prepared to do the job and whether you need help in order you to avoid legal pitfalls.

More or less these are some of the main steps that you need to consider before filing a trademark application. They can save you time and money if implemented well.

In case you want to learn how to do a preliminary trademark search on your own, in order to select the best brand name for your business, check this new Udemy Complete course on trademark search.

Australia joins TMView

EUIPO reports about the accession of Australia to the global trademark database TMView. In this way 1.6 million Australian trademarks will be added to the database, which will give access to almost 60 million marks from around the world.

For more information here. 

New Zealand joins TMView

EUIPO reports about the accession of New Zealand to the global trademark database TMView. This means that in future all national trademarks from this country will be accessible through the database. In that way, the participating Patent Offices became 73, and now TMView gives access to more than 57 million trademarks.

For more information here.

One key moment when you launch a new brand

Launching a new brand in the market is always a challenge. It requires lots of effort and good business and marketing strategies as a ground.

Before launching the brand, however, you need to have an appropriate brand name which in most the cases is a product of a brand-building process.

You have two main options in that regard, to try to create the brand name on your own, in case that you don’t have a big marketing budget, or to hire an agency that will do that for you.

In both of the cases, however, there is one specific moment that you need to pay attention to. It is related to the question to what extent you can use and protect your brand.

It can sound not so an important issue at first glance but it is. The reason for this is that if you start using a brand for which there are already registered trademarks by someone else, you risk becoming a trademark infringer. This can create a myriad of problems for you including the need to re-brand and pay compensations.

And what is the chance for this?

It is not negligible at least because there are millions of registered trademarks in the world which in turn require a lot of attention when a new brand is introduced in the market.

One of the ways to escape such negative scenarios is a trademark clearance search to be implemented before the launch. This can save you not only time but money but will protect you from legal pitfalls.

If you want to learn how to do such trademark searches in the US, Canada, the UK, Ireland, Australia, and New Zealand, you can check this new and useful Udemy course on this topic here.

Do you want to search for trademarks on your own?

When you want to launch a new brand in the market one of the key moment is to be sure that there is no other identical or similar marks to yours. This is a crucial moment because otherwise after your launch you can be accused of infringement of rights by owners of earlier trademarks.

It’s not enough to check for such earlier marks just before the launch, it’s much better if you do this throughout the brand-building process because you will be able to make the necessary changes in your name without losing time at the last moment.

You have two main options to search for trademarks. The first one is to ask the relevant Patent Office to do that, which is possible because most of the Offices offer such a service. The downside here is that for every search you need to pay a fee and to lose some time due to the fact that such search reports are not instantaneous.

The alternative is to do this search on your own. Is this possible? Yes, it is. Most of the Patent Offices have free and open online databases for trademarks because this information is public. You can check them searching for your trademark.

However, you need to know some of the basic principles of trademark protection and how these database works and their nitty-gritty.

If you want to learn how to do such searches and to save time and money you can check this new Udemy course on this topic which will be launch very soon. It will teach you to perform trademark searches for the territories of the US, Canada, the UK, Republic of Ireland, Australia and New Zealand.

For early birds that sign up, there will be free coupons.

For more information here.

The brand new version of Espacenet is available

The European Patent Office announced the brand new version of its patent database Espacenet.

The new version is more modern and dynamic and at the same time allows searching for patent documentation based on different combinations of terms and filters.

In addition, the database will provide its users with better translations of the patent documentation in more languages.

For more information here.