How To Register A Trademark

- The fun starts here:

- But first, gentle reader, you need to decide if you need to register one at all:

You want to make sure no one else can use YourVeryCleverName. That's natural. If you start getting successful, mediocre minds will try to pimp off it.

But note:

- Registering a trademark doesn't stop someone registering a limited company of the same name.
- Registering a limited company doesn't stop someone registering a trademark of the same name.

Doing either of the above will not stop someone using your name, if they can get away with it. They will get away with it if you don't defend your claim.

You defend your claim by writing to the offending business, and then by writing to whoever is hosting the offending content e.g. Google, a webhost, a classified ads site.

The main legitimate reason people try to register a trademark is that they notice that Johnny Crafty is trying to pimp off their business success by copying their name, or operating in their niche with a very close copy of their name.

The main illegitimate reason that people try to register a trademark is that they want to leech off  someone else's success and think they can pull a fast one. And you know what, they might be able to.

This is very annoying. It is also perturbing. Thoughts arise:

"Is this guy trying to take over my business?"
"Is this guy going to damage my business by offering an inferior product?"
"How dare that lazy, unoriginal so-and-so try to leech of my success!" 

So, you go to war.

If a successful businessman has been so busy in running a company and stuck in his own little world and not have realised it would be smart to register the brand name (and image, perhaps) that he's spent so much time and money promoting, that's his fault.

In comes Johnny Crafty who tries to slip an application by him, and he may succeed. Just because SupraBeds has been operating in Bedford for 40 years doesn't necessarily mean John Upright can stop anyone else getting that name.

He can object to the granting of the trademark and Johnny Crafty can try to defend it, but who needs the hassle?   

John Upright needs to get a clue and register his mark as soon as he starts making money and Johnny Crafty needs to find another hobby. If an unregistered mark has been used in such a way so as to establish rights in passing-off (eg the mark is attached to goodwill), he will not be able to register it.

If he tries to register 'Apel Computers' with a picture of the fruit, he needs an IQ test.

The British system is very good. You don't need a legal degree to register a trademark but you do need to have a bureaucratic mindset.

There are two basic tricks:

1. Only part-pay the requested fee upfront. Don't pay the whole fee!

The British government is generous, sort of. There are two stages to registering a trademark: submission and approval.

They let you pay in stages rather that your having to pay a fat wodge up front and then losing the lot if your submission doesn't go through. It's actually quite fair.

You submit your application online, the gentleman at the IPO examines it, if he thinks it's fine he emails you and then you can pay the second part of the fee, and your trademark is then formalised by him.

The first step is you propose the name and type of trademark and the category/categories/sub-categories of industry it belongs in. These are called 'classes'.

This brings us to the next trick:

2. Don't try to register your mark in niches you don't trade in; you'll have to pay more.

It will also increase your chances of success: if you operate laundromats don't try to register 'SupaClean' in engineering or hairdressing-related categories.

Someone else might have snagged that name in those categories, which will mean your initial application will be rejected, wasting your time. Or the IPO may object.

If  the IPO does not object to your application, or a competitor, down the line, you will get your mark registered and then you can defend it much more easily from poachers.

3. How to defend your mark

- If you find someone is using your mark you can first write to them briefly, stating you are the trademark owner and that they have 30 days to pull all references to it from their literature.

- You can also write to any third party displaying the disputed mark and ask them to remove it from their website, literature or shop, for example. This includes Google Adwords. This is a good way to put the kibosh on Johnny Crafty without have to deal with his obstreperous objections.

- After that, try a solicitor's letter.

The above should make 99.9% of Johnny Crafty's 'cease and desist', or get their infringements removed from the third-party hosting them.

For the other 0.1%, you'll have to take a court case. If that happens, be sure you have deep pockets!

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