Registering a trademark is one of those things that sounds very grown up and a little bit daunting but it’s something I recently decided to embark upon when I chose to change my company name to reflect changes in my business. (If you want to know why I chose the name I did, I’ll be writing a post on that shortly.)
Having spent ages going over ideas to find the perfect name for my brand, I felt strongly that I didn’t want someone else to come up with the same name and prevent me from using it. So I took the steps to protect my company name by registering it as a trademark. This means that legally no-one else in the UK can use it in the same “classes” (goods and services the mark will be used in) as me.
I’ve never registered a trademark before but had briefly looked into it in the past. It’s something that people are often advised to get legal guidance with (and I’m not saying not to, either!). However having done a bit of research, I felt confident to undertake the process myself as I was only registering words. Had I been looking to register something trickier to search, like a sound or picture, I would definitely have got legal advice.
And on that note, clearly this post is not legal advice, just my own experience of the process.
Where to start with registering your trademark
The first thing I did was search on this site to see whether the trademark I wanted, or anything similar, had already been registered by someone else. I found it wasn’t. In fact, nothing even vaguely similar was returned in the search results so I felt confident to go ahead with the application.
It’s possible to register a trademark that’s identical to an existing one if it’s in a different class, so discovering there’s an existing mark doesn’t necessarily rule you out of registering yours too. If there’s an identical mark already registered in the classes you want, you can’t register yours. If your mark is similar to an existing one, I’d say that’s definitely a time to enlist legal support. I understand that the decision as to whether a mark – similar to another one in the same class – can be registered, is quite subjective. The biggest issue is whether the two could reasonably be confused.
Choosing a class for your trademark
The classes are different based on whether it’s a product or service-based business. Classes 1 -34 cover goods and 35 – 45 cover services.
I registered Vibrant Entrepreneur in classes 35 (which covers “business advisory services, consultancy and information; Business information services provided on-line from a computer database or the internet) and 41 (which covers coaching). If someone also wanted to use “Vibrant Entrepreneur” in a completely different class, they could but no one can register that or anything too similar in those either of these two classes.
Options to apply for the trademark
Because there were no similar trademarks at all in the search that I did, I felt confident there would be no objections to my proposal to register. I didn’t feel it would be a complicated process but I decided to take advantage of the Right Start checking service anyway. This service means that before you pay the full amount, an examiner produces a report for your proposed mark, highlighting any likely objections.
The cost of registering a trademark in one class is £170 (or £200 if you use the Right Start service) and additional classes are £50 each. As I used the Right Start service I paid £125 upfront and then waited for the results of the check. Within 24 hours I got a report back saying there were no perceived issues. At that point I had 14 days to pay the remainder of the fees if I wanted to proceed.
Using this services means there’s an option to back out without paying the full fee if something comes up in the search that suggests you’d have difficultly getting your application through. Although I was pretty confident the process was going to be simple for me, using the checking service cost just £30 more in total and gave me the piece of mind that I wasn’t wasting my money on a futile application.
If something does come up as a potential issue you get 2 months to resolve it.
A 2 month wait for objections
If the examiner in your case finds no objections, your application is published in the Trademark Journal for two months. At that point, anyone with an existing mark can raise an objection to the application if they feel it infringes theirs in any way.
If there are no objections during those two months, there is a further 2 week wait and then, finally, the mark is registered.
After you have applied for the mark you can start using the ™ symbol to show you are intending to register the mark. Once it’s been registered this can changed to the ® symbol.
Once the mark is published in the journal, it’s public record. After this happened I received a letter in the post saying that to register my trademark I needed to pay £946 – obviously a bit of a shock! It looked like a very standard looking invoice however when I looked at the header and read the small print I saw that it was actually a soliciting letter to register the mark in the World Organization for Trademarks’ database (which is basically a private database, i.e., a scam). Be on the look-out for letters like that if you decide to register a trademark too as they are apparently quite common.
What’s your experience with trademarking?
Have you considered trademarking your business name, slogan or logo? If so what puts you off? If you have registered a mark, what was your experience and how long was the process for you? I’d love to hear your thoughts or experiences so please pop a comment below if this is something you’ve gone through with your business.