Everything you wanted to know about trademarks but were afraid to ask.

Since the first trademark was registered in 1876, countless UK businesses have protected their branding in this way, with 95,162 trademarks being registered in 2019 alone, according to the Intellectual Property Office (IPO).

But should you follow suit? Here are some answers to frequently asked questions about trademarks to help you make up your mind. Contact us for a chat if you have more questions or would like personalised advice.

So, let’s begin by explaining exactly what a trademark is. A trademark is a type of intellectual property. It distinguishes a business, product or service from others on the market. A trademark can be:

• A brand name
• A product name
• A company name
• A logo

A trademark can consist of any combination of one or more:

• Letters
• Words
• Numbers
• Symbols
• Colours
• Shapes
• Sounds
• Movement

A logo, for example, may be composed of one or more colours, shapes, and words.

You may already have added ™ after a word, mark or logo that describes your business, product or service. It is perfectly fine to do this, because ™ can apply to unregistered trademarks. However, you need to be aware that it will not give you legal protection if another business or person decides to use the same identifying mark.

On the other hand, the symbol ® indicates that the name, logo or other identifier has been registered as a trademark. Therefore, it cannot be copied and used by another business or person without permission. We strongly recommend that you gain this level of protection for your small business.

It’s almost certain that you are already using one or more unregistered trademarks, such as your business’s name, its logo, and the names of your products or services. These unregistered trademarks may appear on your website, business cards or brochures.

You may never have thought of registering any of these as trademarks but there are several benefits of doing so.

Registering a trademark provides your business with several advantages. Here is a quick run-down of the most important.

Protect your intellectual property

Registering a trademark protects your business’s intellectual property. It means that no other business is allowed to use that trademark.

Prevent others from using your branding

Registering a trademark gives you the legal back-up you need to prevent another business or person from using the same, or similar, branding. If they were to do this, you would be able to successfully challenge them and stop them from using your registered intellectual property. It would be much more difficult to prevent your unregistered trademark from being used. Another business could even attempt to register it in their own name.

Create a valuable intangible asset

In addition, a registered trademark is an intangible asset of your business. It is included in your business’s balance sheet and its value usually equates to the initial cost of acquiring the trademark, whether your business commissioned its initial design or if it was purchased as part of a deal. If you plan to seek investment, potential investors are likely to regard a business with registered trademarks in a more favourable light than one that has unregistered intellectual property.

License or sell your brand

A further advantage of registering a trademark is that you can license or sell your brand for use by other businesses. This is a good idea if you plan to expand into other geographical markets by using partners or agents, or if you plan to franchise your business throughout the UK or internationally.

Not all graphical representations and words can be registered as trademarks. Before applying to register a trademark, we will help you to consider if it meets the following eligibility criteria.

The trademark must be:

• Distinctive (i.e., unique or easily distinguishable from similar trademarks).

The trademark can be:

• A single word
• A three-dimensional shape (unless it is a simple representation of the item being sold – for example, a company selling apples could not register a three-dimensional representation of an apple).

The trademark cannot be:

• A common surname, such as Smith or Jones
• A place name, such as London or Bristol
• A national flag, state symbol or hallmark
• A heraldic design (although elements of these may be approved)
• Easily confused with a trademark that has already been registered
• A descriptive word relating to the item(s) being sold, such as ‘bread’ for a bakery
• Misleading – it cannot contain a word or symbol that may mislead consumers, so ‘100% natural’ could not be used for a product that contained any artificial ingredients.
• Offensive
• Generic

All of the above criteria apply to new and unused trademarks. If your business has already been using a trademark that does not conform to these criteria for several years, you may still be able to register it. If in doubt, ask us for advice.

Once you’ve decided to register a trademark, there are some steps we would take on your behalf. These include searching for the same or similar trademarks, submitting your trademark application, responding to objections in order to solve any issues, and launching an appeal, if necessary.

The registration of a trademark lasts for ten years. It can be renewed for subsequent ten-year periods upon payment of a renewal fee.

A standard online trademark registration application currently costs £170. If you wish to register your trademark in more than one class or category of goods or services, there is an extra fee of £50 per class.

Another option is a ‘right start application’. For this, a non-refundable fee of £100 is paid upfront. Your application will then be evaluated against the rules of registration, and you will receive a report. If you decide to proceed with your application, an additional fee of £100 is payable within 28 days of receiving the report. An extra fee of £50 per class also applies if you wish to register your trademark in more than one category.

If you wish to register a series of three or more trademarks (up to six can be registered), each extra mark registered costs £50.

If you are considering protecting your brand name, logo or other trademark, our intellectual property consulting service can help by:

• Advising you on whether your trademark(s) would have a good chance of being registered in the UK
• Carrying out searches to determine whether the same or similar trademarks have already been registered.
• Discussing the classes of goods or services in which you could register your trademark and advising on the most appropriate class(es).
• Completing and filing a trademark application on your behalf
• Corresponding directly with the IPO
• Responding to any objections raised

Find out how we helped UFH Supplies to register a trademark, after we successfully appealed against the objections initially raised by the IPO. We are a digital agency based in Leicester, but digital marketing isn’t all that we do. Our consultancy division assists small businesses in such areas as trademark registration, intellectual property, risk analysis and growth strategy. Grab a virtual coffee with us today to find out how we could help your business.