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Surviving The Trademark Application Process

Updated: Dec 4, 2020

Trademark applications are a tricky business. A lot of research goes into assessing if a trademark is available or whether it's going to infringe on someone else's trademark or brand. This will determine whether your application ultimately is going to be challenged.

We would like to share my five top tips for making sure that your application is a successful and seamless journey and avoiding those tricky situations where your application gets challenged. The important thing to remember is that your trademark is supposed to make you stand out. Although your ideas may be similar to established brands, you may see an opportunity to refresh an old band and bring some new ideas to the market. Your trademark has to reflect these new ideas that you want to bring into the world. There is a fine line between refreshing an established market and infringing on the trademarks of your competitors which is ultimately down to the opinion of the trademark registration body.

To help you on your journey of trademark registry, I present my top tips for registering a brand based on our experience

1. Research Trademark Databases

The first step, before attempting to register a trademark, is to research trademark databases across the world to make sure that your trademark has not been registered already. There are a number of important trademark registry websites that you will need to research such as the

Each country in the world usually has its own trademark registry database. Although they do research other databases when you apply for your trademark, they may not have flagged a trademark that could be closely related to yours on another trademark database which could lead to problems later in your business journey.

As soon as you file the application your trademark will be published. At that point, your competitors have a set time, usually three months, to challenge your application. If an infringement is deemed to be found you could be fined by the trademark registration body and ordered to pay the costs of your competitor so do your homework to avoid getting into this sticky situation at all cost.

2. Carefully Select the Trademark Body

The trademark body that you register with needs to be linked closely to the market that you wish to access. This can be the country that you live in or the closest economic area where you can easily distribute the goods that you wish to sell. It is important to research previous applications and challenges as they are all published on these websites and available to anyone in the general public. If you can pre-empt the kinds of challenges that might come up you have a better chance of having a successful application the first time you apply.

3. Search Domain Names and Google

A good way to research whether trademarks are in use is to type it into your web browser and into the Google search bar. Just because someone has not registered the trademark it doesn't guarantee that the trademark is not already in use and making sales. If this is the case, you could land in hot water for trademark infringement. It is often easier to apply in an environment that you are already familiar with and where you can recognize brands easily. Once your trademark is registered with one intellectual property office it will generally be recognized by all other global trademark bodies.

4. Research Amazon Brands

Amazon is a great resource for brand name research. It is a collection of small and big businesses run by all sorts of entrepreneurs who develop their own brands and create an instant trademark on Amazon's platform.

Not all the brands listed on Amazon are registered trademarks, but this does not necessarily mean that they are available for registration by a different seller. If you want to avoid getting any to any sort of difficulty it would be worth taking note if the trademark that you propose is already being used on Amazon.

Once your trademark is registered you can apply for brand registry with Amazon if you have a professional seller account. This will lead to Amazon actively protecting your brand and helping you on your brand building journey. Most small businesses who are trading and have not necessarily registered their trademarks have a presence on Amazon, Etsy or Shopify.

5. Be Unique. Be Yourself.

The best way to ensure that your trademark application is going to be successful is to be unique. The spirit in which trademark law is written is that a brand must stand out, be unique and not be in use or lead to consumer confusion. Ideas like common words are not going to be accepted as trademarks, so let your imagination run wild. Create your own brand-new word, design your own brand-new image and don't be afraid to be unique. Being uniquely you will be the best way to create a successful brand.

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