Do you still remember how a name was given to your newborn lovely child? Making a long list of possible names only ended with a civilized “war” with your spouse? Equally, thinking up a trading name for your start-up, a new product or service, could well be a “torturing” exercise, where hours are spent for exploring ideas, seeking advice and consensus from partners/ friends, or even fortune-tellers.
What comes next? Probably you would engage a designer to turn your desired trade name into a stunning and eye-catching image. Everything goes so logically and smoothly, only until the time when you come to Trasomark (or other decent trademark agents too!) for trademark applications then you realize things may not be straightforward as contemplated.
Unlike a personal name, you may go on to file a trademark application for your trade name. Such a difference requires an advanced-thinking mentality from you. After all, money is money, and time is also money. Trasomark felt for you and wants to remind you of three little tricks before you spare no effort to turn your desired trademark in style.
1. Some marks are not registrable at all without evidence of use!
In practice, not all trademarks are registrable. For example, a 3-dimensional shaped mark, a slogan, or a mark with meanings describing characteristics or qualities of your goods/ services (a descriptive mark), may not be acceptable on a prima facie basis in many jurisdictions and, at best, the application process will never be straight-forward. Even if you can finally secure registration, probably you will need to spend 3-5 times the original costs and double the processing time.
To understand more, please click on Refusal on Absolute Grounds
2. Some people are stronger than others. So are trade marks!
We consider a trademark “strong” if it is easier to (i) secure registration, and (ii) enforce against others from using your valuable trademark.
“Trasomark” is a strong mark, because it is self-coined (no dictionary meaning). It will be truly amazing if you have ever come across this “strange” word when a google search only reveals as little as 3 return hits! Logically it is more a help than a hindrance when comes to trademark registration, as very unlikely you will encounter an earlier identical trademark blocking your application. At the same time, it will also be much tougher for bad-faith third parties to run an argument that they adopt a confusingly similar trademark only by coincidence without any prior reference to your mark.
What if we brand ourselves as a “White” trademark company? As you know, “White” is a common word for a colour or a surname. It is all but possible that one Mr. White, a trademark agent, incidentally branded his company as “White Limited”, or even registered “White” in class 45 covering intellectual property services before you do. It would have become a tall order to secure a “White” trademark and enforce any right against White Limited.
To understand more, please click on Refusal on Relative Grounds
3. Always try to secure your domain names first!
It is almost impossible for you to run a pre-application trademark search across all intended jurisdictions, even if you are professionally trained. One notable complication is the lack of understanding of the local language and culture. For example, while China, Hong Kong, and Taiwan share the same language Chinese, there could be some local slang or trendy phrases that will not be shared and understood by counterparts.
That said, before designing any trademark, you can always secure the domain names first. Unfortunately, you cannot register your preferred domain name. In that case, it is probably an alarming sign that you may also encounter trademark conflicting issues in the future, and it is time for you to consult trademark specialists like Trasomark!
The trademark journey never lacks complexities. Your forward-thinking coupled with the above tips will only help reduce future troubles (and hence wasted money!!) for you. Yet, if you did not have the benefit of reading this article before designing your trademark, and run into difficulties in the trademark filing processes, don’t worry, Trasomark is always there to help, and vow to show our value to you.
