10.7.2021

How to Legally Trademark a Business Name

Written by Aine Hendron

copyright

If you’re ready to open your new business, but want to take extra measures to protect it, you’ll want to trademark your name and branding. This is a step-by-step guide on how to trademark a name, with links to application portals, pricing, and some extra tips that will prevent your application from being declined. 

Step one: Learn what you can and cannot trademark

The first step in protecting your business is to know exactly what counts as a trademark. When deciding what elements of your brand to trademark, consider what makes you unique. 

What you can trademark

Rules and regulations are fairly consistent worldwide. Things you can trademark for your brand include:

  • Words
  • Sounds
  • Logos
  • Colours
  • Letters
  • Numerals
  • Shape of goods

In some instances, you can even trademark scents, but this is rare in most places. 

What you cannot trademark

Your trademark cannot:

  • Include offensive words or imagery
  • Describe the exact goods or services it will relate to. For example, ‘ice cream’ cannot be a trademark for an ice cream company
  • Be intentionally misleading. For example, you cannot use the word ‘organic’ for goods that are not organic
  • Be a 3-dimensional shape associated with your trademark. For example, you cannot trademark the shape of an egg for eggs
  • Look too similar to state symbols, flags, or hallmarks, based on World Intellectual Property Organization guidelines [1]
  • Use an acronym that already exists for a government or state structure or business

Step two: Conduct a trademark search

Check whether existing or similar trademarks exist. You should search for all aspects of your brand that you’d like to trademark. Here’s where you can search for free depending on your location:

Step three: Choose the right trademark class

Trademarks are registered to a specific class, meaning different businesses can register the same trademark in different classes. Each business has to restrict the use of their respective trademark to the class they registered in. You must register for all relevant classes that your trademark will operate in for exclusivity.

There are 45 different trademark classes: 34 covering goods and products and 11 covering services. Known as the Nice classification, you can review the full class list at the World Intellectual Property Organisation. Use the TMclass classification search tool if you need help picking a class [3].

Step four: Apply and pay for trademark application 

You can register your trademark on your relevant government website. The links included will bring you to your relevant application form. 

In Australia, New Zealand, and the US, businesses can access a discount on their trademark application if they provide a description of the goods or services that the trademark will be used for and identify them into the classes prior to application. In Australia, you must consult the Intellectual Property Goods and Services Pick List [4].

The US has a similar policy, known as TEAS Plus. 

In NZ, you can fill in your up-front requirements on the NZIPO website for a discount.

Prices shown are listed in the local currency to which they apply and are correct as of October 2021.

Ireland

Register online at the Intellectual Property Office of Ireland

  • €70.00 initial application fee
  • €70.00 per additional classification

UK

Apply online at UKIPO

  • £170 online application fee
  • £50 per additional classification
  • £40 international fee
  • Additional WIPO fees vary

New Zealand

NZIPO application prices vary depending on some circumstances:

  • $115 per application per class
  • $80.50 per reduced rate initial trademark application if your goods and services specification use pre-approved terms
  • $57.50 per reduced rate initial trademark application if your application is:
    • based a search and preliminary advice report issued within three months of your application
    • exactly the same information as assessed in the search and preliminary advice report

Australia

API fees also vary depending on whether or not you entered your details into the Pick List:

With pick list

  • $200 per application per class
  • $400 per series trademark application per class

Without pick list

  • $400 per application per class
  • $550 per series trade mark application per class

United States

USPTO has two registration options: 

  • TEAS Plus: $250 per application per class 
  • TEAS Standard: $350 per application per class

Canada

Apply online on the Government of Canada website

  • $336 per application 
  • $106 per additional class

If your application is objected to or declined, you can withdraw the application, defend it or try to directly resolve the issue with the person raising the objection.

A trademark application will not be passed until objections are resolved. Even if your trademark is successfully registered, it can be challenged later in the future.

Must-read trademarking tips

Now that we’ve covered the rules and regulations around trademarking, let’s look at some tips that you can apply to make the most out of your trademark. 

What to do if your trademark is taken

The British Business Bank provides some excellent tips on what to do if your desired trademark is taken [5]:

  • Check trademark class: You may be able to trademark your name in a different class to the existing registered trademark.
  • Check expiration: Once a trademark is registered, it must be used commercially within five years. If it has expired, you can request to have the existing trademark cancelled and register your own trademark.
  • Seek permission to use the trademark: Write to the owner asking permission to use the trademark. They may give you permission or agree to license its use for a fee.
  • Alter your trademark: Explore if changing colours, style and design of the mark is enough to differentiate it. Infringing a trademark risks your entire business. If you can’t register what you have, it’s best to go back to the drawing board and rebrand rather than risk future legal action.

Check your domain is available

Being the owner of a registered trademark does not automatically entitle you to use that mark as a website domain name or social media handle. If someone else owns the addresses of your ideal trademark then this won’t stop you from being able to register your business name as a trademark, but it could lead to confusion among customers.

Think ahead

Trademarks are valid for 10 years. When choosing a name, make sure it aligns with the vision you have for your company in that period of time. For example, if you want to trademark your makeup company name; you could include the word ‘makeup’ in your trademark, but what happens in 6 years when you want to expand into haircare?

Proactively defend your trademark

You have to defend your trademark, as not everyone will conduct a name search before applying. It’s up to you to make sure that your exclusivity and reputation are maintained. Failure to adequately enforce your trademark rights can result in both degradation of the brand, and potentially loss of exclusive rights altogether. In addition, if you expand overseas, you will need to take appropriate steps to clear and protect your trademarks under foreign laws as well [6].

Remember that trademarking is an ongoing process

As you expand your product line, you’ll have to carry out more clearance searches and file new trademark registration applications. This will avoid any lapses in protection and risk management. If you start offering new products in a different market but plan to use the existing trademark, you’ll need to conduct clearance in the new market segment and file supplemental registration applications.

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