IP101 for SMEs: HOW to trademark your company name or logo.

Welcome to the second in our blog series on trademarking for SMEs. If you missed the first one – on WHY you should consider trademarking in the first place – give that one a read too.

This blog is about the HOW of trademarking & aims to answer two questions that Rock is commonly asked by business owners…

1. How does someone register a trademark?

2. Do I really need to outsource to professional advisers or can I D-I-Y?

Before we dive into the answers though, let’s get a few terms clear:

Tackling the terminology

IPO = Intellectual Property Office, the UK Government department responsible for trademarking, copywriting, patents & designs.
WIPO = the World Intellectual Property Organization
Filing = the process of submitting a trademark application
Territory = the countries that you want to register and protect your trademark in
Classes = all IPO offices use the NICE classification system that groups together similar goods or services. Goods are in classes 1 to 34, Services in classes 35 to 45. Each class contains a list of terms which cover all of the different goods or services included in that class. Most businesses will have services that cover more than one class.
Infringement = the unauthorised use of a registered trademark, whether intentionally or accidentally. This can include using an identical or similar trademark to one that is already registered for a similar set of goods or services in the same territory.

Got it? Good, let’s move on.

The Trademarking Process

Superficially, the process itself looks simple.

The key stages in the process are:

Searches
Filing
Assessment
Publishing
Opposition (if you’re unlucky)
Registration (if you make it through)

However, nothing legal is ever simple, is it?

So here are the steps laid out in layman’s terms – but sense checked and approved by Saad Ashraf, from Rock.Partners’ strategic partners The Trademark Helpline.

Step 1: SEARCHES

Before you file a trademark application, you first need to

Make sure your trademark meets the registration rules in the first place i.e. it’s not offensive or misleading; it doesn’t simply describe the product or service it relates to, or is just a 3D version of it; it’s distinctive, original & doesn’t look to similar to any state symbols – like flags or hallmarks – based on WIPO guidelines
Decide which classes & territory/ies you want to register your trademark in* - not just considering the nature of your business’ current operations but also any potential ones.
Check if anyone else has already registered your proposed trade mark - or something so similar that it could pose a threat to your application. If you’re looking at the UK, then members of the public can search the IPO database online; Companies House has a publicly available register; Google your desired brand name; Look it up on all the main social media platforms; Check out what domain names are available. Basically, sense-check it as much as possible before committing to any significant costs.

*When it comes to future-proofing & supporting growth, Saad makes a brilliant point

“Plan ahead for the business/brand you want to be – not just the here & now. If you know you want to expand into new regions or industries within the next 2-3 years, start the process of securing your brand name & identity now so you can better support your growth plans and not find yourself restricted”

STEP 2: FILING

Once you feel comfortable that your trademark is registerable and won’t infringe on any existing trademarks, you need to choose what type of application you want to file.

Standard. Pay upfront in one go. This is the cheaper option but is advised only if you’re 100% confident that your trademark meets the registration rules, or
Right-start. Pay 50% upfront & only pay the balance once the IPO office confirms your application meets the rules. Right-start is slightly more expensive than standard because you’re paying extra for the peace of mind.

In either case, your fee will depend upon the number of applications, classes & territories that you want to file in (see Step 1).

When you file your application, it must include:

Details of what you want to register, e.g. your company name, tagline, slogan, logo or symbol,
The trade mark classes and terms you want to register

Be advised - the filing application form is trickier than it looks…

STEP 3. ASSESSMENT

Upon receipt of your filed application, the IPO will then

Examine your application (within 2 weeks)
Search for similar trade marks (IF they find a similar trade mark, they will contact you directly & you'll have to start again – this is why the sense checking of Step 1 is so important)

STEP 4. PUBLISHING

Assuming there are no clashes, the IPO will then publish your application in the trade marks journal for 2 months. If no one opposes your application during this period, your mark will be registered 2 weeks later. Result!

STEP 5. OPPOSITION (doesn't always happen)

Sometimes, someone opposes your application because they believe it will infringe on a trademark that they already have registered & will pose a commercial threat to their business.

If this happens, you can either:

Directly approach the person making the opposition and try to come to an agreement with them (e.g. you’ll only use the trademark in restricted terms within specific classes etc).
Defend your application legally (you will have to pay legal fees/costs if you do this)
Withdraw your application

Dealing with opposition can be hugely complex, time-consuming and costly. It's yet another reason why Step 1 is so important!

STEP 6. REGISTRATION

Only once there are no active objections or oppositions in place will the IPO register your trademark and send you a registration certificate that is valid for 10 years.

Assuming you’ve not had any objections and the process flows smoothly, it typically takes about 3 months from filing to registration.

Seems straightforward – can I DIY it?

When it comes to whether you can manage your own trademark search & registration process, Rachel's answer is clear

"maybe (if your requirements are simple & UK based) but I don't ever advise it."

Why?

Just because you’re capable of learning how to register your own trademark, doesn’t mean it’s the best use of your time or resources.

Specialist Trademark (TM) advisers do this day in, day out. They’re far quicker and more accurate at all things trademarking that you will ever be. Plus, the process takes time and you have a business to run.

But, even if that doesn’t put you off, these two big reasons should

Risk Reduction

Yes, we banged on about risk in our previous blog in this series and it’s back again. Employing a professional TM adviser will reduce your risk of

Not doing your due diligence diligently enough, e.g. missing a less obvious conflict that could result in an opposition case
Making a small mistake in the somewhat complex application form that could result in a delay or outright rejection
Restricting future growth opportunities* by not having considered which classes and territories you’re not currently working in but might be in the future
Being exposed to potential infringements by not monitoring your trademark once registered

Legal Support

Trademarks are subject to legal nuances, especially when dealing with international registrations or sector specific protections. A professional advise can help you navigate them.
If you’re unlucky enough to face opposition during the registration process, professional support can be the difference between making it to registration or having to withdraw
Once registered, a TM specialist can help you to monitor your registration status, identify any potential infringements and help you to defend against them. There’s little point in investing in trademark protection if you’re not going to use it – but most business owners would have no idea how to recognise or manage this type of risk… is the other brand really a threat? To what degree? Can the threat be mitigated by a civil discussion between the parties and a subsequent formal agreement? Will a ‘Cease and Desist” letter cut the mustard? Or does legal action need to be threatened or progressed?

Saad recalls the case of EasyJetwash vs EasyGroup

"Registering a trademark isn’t necessarily a done deal. Somehow, the owner of a driveway-cleaning business called “EasyJetwash” managed to register his trademark in 2022. EasyGroup (who own the airline EasyJet) have professional IP advisors who proactively monitor and defend their own trademarks. They threatened the business owner with legal action. He agreed to rebrand his business AND pay damages to EasyGroup." Reference: Staffordshire firm EasyJetwash agrees to payout in EasyJet row - BBC News

So, the case for letting the pros handle your trademarking is clear.

Over the course of her 25 year career in corporate branding, Rachel Vigers has supported numerous clients through the trademarking process. Yet, she still followed her own advice & engaged The Trademark Helpline to help her secure the registered trademark for Rock.Partners. It was easy to do and, with an affordable monthly payment option that also includes 12 months' of monitoring post-registration, it was a no brainer.