What’s in a name? And should I trade mark?

I’m so excited to be starting work for my first three official clients this week!

And what a fantastic mix of tasks – everything from Google AdWords through to a WIX Website.

One of the very important tasks which I will be completing for them is registering a trademark, so I thought I would take a moment, just to jot down a few top tips when it comes to company names and whether you need to register your trade mark! I went through this process when registering a number of marks (both UK and International) for my former company and it is much easier than you may think.

So let’s think about the name first of all and a real ‘caution’ to bear in mind when choosing your name.

I posted on Facebook a while back that top suggestions for a memorable and successful trading name were:

A name which rhymed (Ronald McDonald)
A name with assimilation (Musical Minis)
A name with a metaphor (Moving Expectations for a removal company)
A name which does what it said on the tin (We Make Cupcakes)

The latter is something you need to think carefully about however, if you want to register a Trade Mark, as the IPO states very clearly that a mark

“cannot describe the goods or services it will relate to, e.g. the word ‘cotton’ can’t be a trade mark for a cotton textile company” https://www.gov.uk/how-to-register-a-trade-mark/what-you-can-and-cant-register

Or to put it another way if you are trading as a set of words common to your industry, it is unlikely you will be able to register the mark e.g. The Cupcake Company

I recently worked with a client who was facing just this dilemma. They had built a well-known company locally and wanted to franchise, but the company name was a generic term within the industry they worked in – meaning a trade mark application was not possible.

So do they rebrand to be able to apply for a TM, or try to franchise without being able to guarantee their franchisees any brand protection (in reality what have they got to sell if they haven’t got a protectable mark?)

We talked about ways the generic words could potentially become distinctive

Clara’s Amazing Cupcake Company (rather than The Cupcake Company)

So potentially a remedy - but still a rebrand nevertheless!

If you think you will need to protect your mark in the future, or hope to make an income from the sale of your mark, it is well worth ensuring you build a brand around a feasible mark now!

But do you need to register your mark at all and what is a trade mark.?

Well think of it as one element of your ‘brand’.

It is something which sets aside what you do in the market place and gives you an identity.

The mark your register isn’t necessarily the name of your business – it may be the name of a particular product you supply or service you provide. If you are keen for this mark to only identify you as the provider, then it is highly worth protecting it!

Without protection, an unscrupulous competitor could use your mark or elements of it, to trade off your good will (or even damage your good will if what they provide is inferior) i.e.

Mrs Brown sells cakes under ‘Browns Brilliant Brownies’ – they have a fab reputation for amazing brownies (can you tell from this blog that I like cake!)

Another baker starts selling under a similar name Browns Best Brownies – they are not great

Word of mouth is confused …. Some consumers are raving about that Browns Brownies place (Mrs Brown and her original company), some consumers are not (they’ve had the inferior product)….. Two different products but the word of mouth attatches to and affects both!

So should you register?

It is important to understand that just because you have registered a limited company name or even own a domain, this does not guarantee that your name can be registered as a mark and doesn’t give you any protection under Trade mark law!

In many cases a company will feel that they do not need to register their Trade Mark and there is no legal requirement, but it is of course sensible to protect your brand, especially if you have invested a lot of time and effort into building it.

Think about what sets you apart to your customers – if your name, brand or logo are important parts of this, then you are wise to protect them.

I would say that it is also essential to do so, if you want to make an income out of others using your brand (franchising for example).

IPO state

“When you register you’ll be able to:

Take legal action against anyone who uses your brand without your permission, including counterfeiters
Put the ® symbol next to your brand - to show that it’s yours and warn others against using it
Sell and license your brand”

Whilst you may feel as a business you would never be in the position to be able to afford to take legal action against a competitor, with a registered mark you may not have to! Even having a registered mark is likely to put people off using it or something very similar to it!

Did you know?

There are 45 ‘classes you can register in’: 34 classes for goods and 11 for services (you can register in more than one and should carefully read them all to see if you should!)

You don’t have to have a solicitor to submit an application – the IPO web site will allow you to search the trade mark database to see if your mark is free (but do research those classes carefully!)

You will likely be inundated with spam post, asking you to pay hefty fees to be published in various journals – do not be taken in!

Registering your business at Companies house does not offer you any protection under Trade Mark law

In addition, just because you register a mark, doesn’t guarantee you the domain (a mark can be registered by a number of people provided they are working in different business sectors and industries).