1. Before Filing
Our suggestions for selecting a great trademark
A great name should be catchy, memorable and create interest in the product or service but most importantly should be registerable as a trademark.A common problem in selecting a mark that would create instant interest is the temptation to use descriptive or generic terms - marks that directly convey characteristics of the goods (e.g., JUICY for fruit). These words should be free for everyone to use.So how do you select a great name?On one hand, you can create a completely made up word that no one has ever heard of like such as Kodak or use a common word that is connected in an arbitrary way with the goods or services provided such as AMAZON for online retail store services or APPLE for computers.On the other hand you may want a mark that creates instant interest in the product or service because it is suggestive. Such marks tend to allude to the nature, quality, or a characteristic of the products or services in relation to which they are used, but do not describe this characteristic. An example of a suggestive mark is "GREYHOUND" for bus lines.Once you have an idea, please ask us to do a clearance search. This will make sure that no one is already using the term and that it does comply with the relevant Trade Mark laws.
What is a trade mark?
A trademark is either a word, name, logo or slogan used to identify and distinguish the goods or services of one business from its competitors and to indicate the source of the goods. The Trade Mark Registrar requires that a trademark be distinctive and non-descriptive of the goods and services on offer.The registration will result in a certificate which has legal status, allowing the owner of the trademark exclusive rights of use.
Can I Reserve a Trademark Before I Use It?
Yes. In many countries a trademark can be "reserved" with the relevant Trade Mark Office by filing an application. We can guide you through the laws in the country of interest. For example, in the UK, there is no requirement to prove use of the mark for the first five years. Whereas in the USA the application can be filed on an Intent-to-Use basis. Although an Intent-to-Use Application requires additional paperwork to be filed during the Registration Process, it permits persons to reserve a trademark for future use while their business, brand, or product line is developed.
What makes a good trade mark?
Your trademark needs to be something that other traders don't need to use in the normal course of their trade. This means that every-day language and vocabulary should remain available for all to use. Granting monopoly rights in words such as geographical names, common surnames and trade expressions would deprive others of their right to use these words in the relevant industry.A trademark must not be descriptive of the goods or services that it covers or similar or identical to another mark for the same or similar goods and services.
What happens after Trademark Tribe files the application
Approximately two weeks from filing the Examiner at the Intellectual Property Office will review the application to make sure that it complies with the Trade Mark Act and if it is entitled to be registered. If he or she determines that there are no issues then the mark will be passed for publication in the Trade Mark Journal for a two month period, for opposition purposes. (Publication is discussed below).If there are any administrative issues then a letter will be issued asking for them to be corrected. If the mark does not comply with the Trade Mark Act then an objection will be raised. A period of two months is usually granted in order to respond or the trademark will be abandoned. If the response is accepted, the Examiner will then approve the mark for publication. If the response is not accepted a Hearing will be offered. Depending on the outcome of the Hearing the mark will either be refused or accepted for publication. If refused an appeal may be lodged.PublicationIf approved for publication, the trademark is published in the Trade Mark Journal for opposition purposes for a period of two months. During this opposition period any party wishing to object to the registration of the mark may do so by filing either a Notice of Intention to oppose or filing a formal Notice of Opposition. If an opposition is filed our experienced professionals are ready to assist you in responding to and moving your mark towards registration. Provided that no Notice of Opposition is filed against your mark, approximately two weeks after the opposition period ends, your mark receives its Certificate of Registration. A registration lasts for ten years and may be renewed for a further ten years. There is no limit as to how long you may keep your trademark in force, you may renew it or abandon it or withdraw it. Don’t forget that it is a valuable asset that can be sold.
If you file a trademark you may then within six months of the application date apply for the same mark in a different country and claim priority from that mark. This means that the new application would then be given the same filing date as the first trademark. This is called a priority application. You may still file a trademark application in any other country after six months but the new application would then be given its own filing date.Please do let us know if you have a trademark anywhere else in the world.
We check the UK Trademark Register, Company names databases, domain names as well as some social media sites. Searches are usually undertaken prior to applying for a trademark in order to find out whether there are any identical or similar applications that may prevent you from obtaining a successful registration. The advantage of doing a search is that usually the search costs less than that of filing an application and it can give an indication of whether the application may fail. This will save you from paying unnecessary filing fees for an application that will not proceed to registration. Of course this will add additional costs and time to the process.Some marks can enjoy protection even if they are not registered. This is because traders can build up common-law rights simply by using the mark over a period of time, thereby building up a reputation under the mark in the field in which they trade. Unfortunately, there is no appropriate database of unregistered rights and therefore an internet search is undertaken. Even if search results are favourable, there is always a risk of conflict with undiscovered unregistered marks. However, this risk is generally quite small, because traders usually have a reasonable idea of the marks that are already in use in their field of activity.
There is a "use" requirement in the UK meaning that your trademark must be used within 5 years in relation to the goods and services applied for. If you do not offer the goods or services as applied for in the trademark application after five years, your trademark may become vulnerable to cancellation, should a third party want to apply for a similar trademark to yours.
Value of a protected name
A trademark registration grants the owner exclusive rights to the name for the goods and services registered. Unfortunately a Companies House registration or domain name registration does not actually give you monopoly rights to the use of the name, it is only through trademark registration.A business is at risk if it does not protect its name, it could be forced to rebrand and be faced with large costs should it be infringing someone else’s rights.You insure your house and your car, so for a small investment you can protect your name and build your business safe in the knowledge that you own the rights to your name.Working with Trademark Tribe is a simple and affordable way that lets you appoint an expert to handle your trademark application.
Why should I trademark my brand name?
It is not a requirement to register a trademark, however, registration has several key advantages which make it important to obtain a registration especially to enforce a trademark and preclude others from using your mark or similar marks thereto. A trademark registration provides:
- Notice and evidence of your claim of ownership of a trademark;
- Puts people off using your trademark and allows you to take action against them if they do;
- Allows Trading Standards Officers or Police to bring criminal charges against counterfeiters if they use your trademark;
- Is your property, which means you can sell it, or let other people have a licence that allows them to use it.
How long does the process take?
We would encourage you to apply through our website. All applications made through our site begin with a search which determines whether your mark is likely to be registerable. If it passes this first test (you'll see a green 'tick' if it does) then you can submit your application online through our quick automated service.Once we receive your application it's then reviewed by our trademark experts who identify any potential problems that have not been picked up by the online search (there are still some parts of the search that are best done manually). At this stage we may contact you if we think your mark should be modified in any way (if it can't be modified and we think it is likely to fail for any reason then we do not process your order and payment is refunded less relevant fee for the search and report.Once we are satisfied that your application is going to succeed then it's submitted to the trade mark registry on your behalf. A UK application takes approximately 4 months from application to mature to registration.
Opposition received after publication
The owners of similar or identical marks are given the opportunity to oppose the application during what is known as the ‘publication’ stage which lasts for a period of two months in the UK. Unfortunately, if an opposition is raised against the proposed trade mark, it will substantially delay the application process and you will be required to enter into opposition proceedings. The burden of proof will be on the opponent to show that the marks are conflicting.We advise that you keep all documentation which is associated with the sales, marketing and advertising expenditure as well as evidence of first use, in the unlikely event that an opposition is raised against your proposed trade mark. Opposition proceedings vary depending on the facts and circumstances of each case. Should an opposition be raised against your proposed trademark, we will advise you accordingly.
What happens if I get citations of other marks from the Registry?
Likely conflict with earlier marks, are not raised as official objections against new applications in either the British or the European Community examination systems. An earlier mark can only cause a bar to subsequent registration of the same mark or a similar mark if the owner of the earlier mark files a formal “opposition”. The onus is therefore very much on the trademark owner to be vigilant concerning the filing of similar marks by others (for example by maintaining a watch service) and to oppose conflicting marks where necessary. Both UKIPO and EU Trademark Office carry out a certain amount of searching of potentially conflicting marks, which are brought to the attention of the applicant for information; in some cases, the owners of earlier cited marks are also notified, but objections are never maintained unless an opposition is filed. We will deal with all aspects of your application.
Can I use the TM or ® symbol
Before your trade mark is registered, you are free to use "TM" to show that your mark is being used as a trade mark.Once the mark is registered, you can use the ® symbol or the abbreviation "RTM" (for Registered Trade Mark) to show that your trade mark is registered.A trademark registration is more affordable than you would think. With a registration lasting 10 years, obtaining a ® is one of the best investments in your brand you will ever make.
3. After Registration
Watch / Monitor
Once you trademark is registered, it is imperative to monitor potential infringing use of your trademark. Discovery of potential trademark infringement is critical because the failure to enforce your trademark against wrongful use thereof could diminish the strength of your trademark and could even result in abandonment or cancellation of your registration.TrademarkTribe provides a watch service which provides regular searches for potential infringers and conflicting uses of your trademark. This starts from £80 per year in the UK.
Once your trademark is registered make sure it stays registered. In most countries you need to renew your mark every ten years.
Change of Name or Assignment
Some trademark owners transfer their ownership of a mark to another entity, which is called an assignment. You require an assignment document to set out the legal transfer of the change in ownership. We are able to provide a suitable assignment document, if you do not have one of your own.In addition, some trademark owners change their names while retaining ownership. This does not require a legal assignment but simply proof of the change of name. For the UK, Companies House will issue you with a change of name certificate, which can then be used to record the change of name.We take care of recording the assignment or change of name at the Intellectual Property Office for you.
Cease and Desist
Just because someone challenges your trademark, it does not automatically mean that they will win. However, many forms of challenges (e.g., Domain Name Dispute, Notice of Opposition, Petition to Cancel and lawsuits) have strict deadlines for which an answer must be filed. Failure to respond in the allotted time may result in the challenger winning by default.If you receive a challenge to your mark in any form, contact us immediately. Our knowledgeable trademark attorneys have the experience required to combat these challenges and guide you securely to the best possible outcome.
Why appoint Trademark Tribe
TrademarkTribe is about bringing your brand to life safe in the knowledge that you own your brand. We provide simple and affordable legal protection for your name or logo. With the explosion in social media it is even more important today to ensure that you have exclusive legal rights to the use of your name. These rights are provided through trademark registration. More than just a trademark we will ensure that the name is available at Companies House, as a domain name and free for use on Twitter and Facebook.Our DifferenceWhile other trademark agents focus on trademarks we think about your position in the marketplace and how you will establish a competitive edge through the use of your name. So by providing comprehensive services in one place our clients can bring their brand to life safe in the knowledge that they own it and no one can ask them to stop using their name.
What is included in the fee
We charge a flat fee rate and are representatives on your application from filing through to registration and support beyond. Before the application is filed we will provide a clearance search. This search will highlight if the application is likely to be registrable or not. If your mark does not meet the requirements of the Trade Mark Act, we will discuss this with you and before the application is filed, we will refund the fees except for the £80 search fee for a UK application and £120 for an EU application.If in the clearance search we highlight any potential marks which may oppose, we will advise you of this and you can decide at this stage whether you would like to proceed or not. Should legal advice be required there may charges for any correspondence between our experts and the registry on your behalf but we will always advise you of this in advance.
Terms & Conditions
We at Inbrandgible Limited trading as TrademarkTribe.com are delighted to share with you our professional expertise, enthusiasm and commitment to help provide the right environment in which your business can prosper. In return for this and in order to achieve a successful working relationship we rely upon your co-operation and agreement with the terms below. This user agreement governs your use of this website and the purchase by you of the services and products we provide.1. Please take time to read these terms and conditions it is important for both of us that you understand our contractual relationship relating to your use of our services. By using the site and/or registering on the site, you agree to these Terms and Conditions and to our Privacy and Cookies Policy. We will not allow you to purchase any services from us unless you have confirmed that you have read these terms.
2. REGISTRATIONYou must ensure that the details provided by you on registration or at any other time are correct and complete.
3. PASSWORD AND SECURITY3.1 When you register to use the TrademarkTribe.com site you will be asked to create a password. You should keep this password confidential and not disclose it or share it with anyone. You will be responsible for all activities and orders that occur or are submitted under your password. If you know or suspect that someone else knows your password you should notify us by contacting customer services immediately (see end for contact details). 3.2 If TrademarkTribe has reason to believe that there is likely to be a breach of security or misuse of our sites, we may require you to change your password or we may suspend your account.
4. PAYMENTS AND CARDS4.1 Payment for services will be taken at the time you place your order and once we have checked and verified your card details. If there is a problem taking payment for all or part of your order we will contact you by email (or by telephone). 4.2. You undertake to us that the details you give to us are correct in particular that the credit or debit card you are using is your own and that there are sufficient funds to cover the cost of the service. When you place an order to purchase a service from us we will send an e-mail to the address you give us confirming receipt of your order along with the details of your order. 4.3 We require a verified credit or debit card and full payment before we can consider your order. Authorisation of your card may reduce the available credit or balance at the discretion of the card issuer.
5. SERVICES AND THIRD PARTIES5.1. We operate to a principal as well as an agency model. This means that we may act as a disclosed agent for third party suppliers, such as a trademark attorney, a patent attorney, a company formation agent or a domain registrar. What this means is that the contract for the service is between you and the supplier. In most cases this will mean that there are additional terms and conditions governing the contract as each supplier will have terms and conditions relating to that service. Where we act as agent, this will mean that we have no contractual liability to you in respect of that service. However, we may still be liable to you if we have been negligent; we have misrepresented important information or have been in breach of any other relevant law. On the other hand, for some products, we act as principal. This means that the contract for the product is between you and us. We will let you know where we act as principal and where we act as agent.
6. ACCEPTANCE OF ORDER6.1 Acceptance of your order brings into existence a legally binding contract between us. Our service to you will commence on acceptance of your order. We reserve the right not to accept your order at our sole discretion. 6.2 We will provide estimates of future costs if requested and these will be given in good faith based upon existing knowledge at the time. Costs may be affected by matters beyond our control, for example, when there are fluctuations in exchange rates or increases in official fees, or when it is difficult to accurately predict the amount of work involved and therefore such estimates are not binding. 6.3 If there are any changes to the details supplied to us by you it is your responsibility to inform us via our web form or by contacting our Customer Services as soon as possible. 6.4. Many aspects of our work involve meeting strict deadlines set by Patent Offices, Courts, etc. and we therefore require timely, complete and accurate information and instructions. We cannot accept liability if complete and clear instructions are not provided early enough for us to act within official time limits. Time limits will be communicated to you, but we cannot undertake to give reminders in all circumstances. 6.5. We prefer all instructions to be given or confirmed in writing. However, we recognise that this may not always be possible and in such circumstances we accept no liability for any misunderstanding by either party or for any losses or costs incurred as a result. 6.6. By entering into the contract with us you authorise us to lodge on behalf of you or other individuals or bodies all necessary documents with third parties including, without limitation, documents at Intellectual Property registries and you warrant that you have sufficient authority from the individuals or bodies to instruct us on their behalf. 6.7. We will do our best to correct errors and omissions as quickly as practicable after being notified of them. However because of the sophisticated technology that is required there may be times when obvious errors occur. For example, very occasionally, this may result in a price or service or other detail displayed or presented being incorrect. In this case we reserve the right to cancel that contract, but this of course will be without any liability to you. If, by mistake, we have under-priced an item, we will not be liable to supply that item to you at the stated price, provided that we notify you before we proceed with your order. In those circumstances, we will notify the correct price to you so you can decide whether or not you wish to proceed with your order at that price. 6.8. All actions and attention provided by us are chargeable. These include telephone calls, reminders and reporting on communications which we may receive as your agent. Our hourly rates vary according to level of work required and range from GBP 290.00 per hour to GBP 100.00 per hour. We always review our charges to ensure that they are reasonable for the work performed. We will notify you of any charges and hourly rates before they are incurred and will await your confirmation prior to proceeding.
7. Money Back Guarantee7.1 Upon submission through our website of an order for an application in the UK a Direct Hit Search will be performed of the UK Intellectual Property Office records. Our Direct Hit Search includes a search of your exact mark, or as close a match as possible, of the UK Intellectual Property Office records. You agree that should we encounter a mark which would block the registration of your mark in our preliminary Direct Hit Search and before the application has been filed at the UK Intellectual Property Office, upon request we will refund you all of the monies paid for the Standard Filing Package less the search report fee of £80+VAT. 7.2 We will offer a guarantee on 'Our fees' only if the application meets our criteria for doing so. We will always advise the client of this. If there is any reduction in the guarantee the client is free to instruct us not to proceed with the application in which case the order will be cancelled and we will refund you all of the monies paid for the Standard Filing Package less the search report fee of £80+VAT. It should be noted the Registries never refund their fees. 7.3 Upon performing a search and examining the proposed filing for other common refusals if we see a basis for refusal prior to filing and we withdraw our guarantee you will have two options: 7.3.1. First, you can choose not to proceed with the filing and receive a refund of all monies paid less the £80+VAT search report fee. 7.3.2 Second, and in the alternative, you can proceed with the filing and if the mark is refused registration on the grounds identified, receive a special discount of 10% off our office action response services hourly charges. 7.4 In the unlikely event we fail to spot a potential refusal prior to filing your mark and we have guaranteed your application and it is refused on that basis you can choose: a) for us to respond to the Office Action and attempt to argue the mark through to registration at no additional cost to you. We will not refund 'Our Fee' if the mark is refused. b) to stop work on the application and receive a refund of 'Our Fee' within 28 days of our receipt of notice of refusal by the registry. It should be noted the Registries never refund their fees.
8. CANCELLATIONYou must tell us in writing if you wish to cancel your order. This includes by letter or email. You should retain evidence of having given cancellation notice such as certificate of posting or confirmation of email receipt. Your cancellation rights will end once we have begun to carry out the service. If you cancel or amend any instructions after we have started work you may be liable for any costs, expenses, charges and losses incurred by us up to the date of such cancellation or as a result of such cancellation or amendment including and without limitation any costs, expenses or charges arising from the cancellation or amendment of any contracts we have entered into and/or instructions we have given to third parties for the purpose of performing the work.
9. LIABILITY9.1 Any liability resulting from our delivery of services will be limited to direct damages up to the amount of the price paid by you for the services ordered. We shall not be liable for any special, indirect or consequential loss or damage whatsoever (whether caused by our negligence or otherwise) which arises out of or in connection with the supply of the service. 9.2 For UK and CTM applications, our services do not include carrying out searches of national trade mark Registries, other than that of the UK. Other national searches may be carried out on request, at an additional cost. 9.3 It is your responsibility to provide whatsoever information to us and/or the registry in a timely and full manner as is reasonably required to support a successful trademark registration which may involve significant additional expense on your part including taking legal advice. 9.4 We are not legal practitioners and do not offer legal advice or legal services. Opinions offered by our officers or agents should not be taken as a substitute for informed legal opinion. 9.5 You accept that we may use selected agents and third parties to provide the service to you.
10. REFUNDS10.1 If you are entitled to a refund, we will refund you as follows: • If you paid by card, we will refund you on the same card; • If you paid by BACS, we will refund you to the same account funds were received from by BACS.
11. INTELLECTUAL PROPERTY11.1 The content of the Trademark Tribe site is protected by copyright, trademarks, database and other intellectual property rights. You may retrieve and display the content of the site on a computer screen, store such content in electronic form on disk (but not any server or other storage device connected to a network) or print one copy of such content for your own personal, non-commercial use, provided you keep intact all and any copyright and proprietary notices. You may not otherwise reproduce, modify, copy or distribute or use for commercial purposes any of the materials or content on the Inbrandgible site without written permission from Inbrandgible. 11.2 No licence is granted to you in these Terms and Conditions to use any trademark of Inbrandgible or its affiliated companies.
13. Governing law, jurisdiction and language13.1 The contract between you and Inbrandgible Limited trading as TradeMarkTribe.com shall be governed by and interpreted in accordance with the laws of England and the English courts shall have jurisdiction to resolve any disputes between us. 13.2 The website may be used only for lawful purposes and in a lawful manner. You agree to comply with all applicable laws, statutes and regulations regarding the website and any transactions conducted on or through the website. All contracts are concluded in English.You may contact us at info @ trademarktribe.com Wisteria Camrose House 2A Camrose Avenue Edgware Middlesex, HA8 6EG Tel: +44(0)208 102 9871