THE TRADEMARK THERMOMETER

A guide to how the process might look.

What is The Trademark Thermometer?

You can describe it as a flowchart for trademarks. From the first idea to a new brand to the communication strategy and launch.
Follow the steps and do it the correct way. Or as we like to call it ”The Otmore Way”.

Step 1 – The idea

Was the Trademark name a result of a creative working process or was it obvious from the start? Or are you going to acquire a registered trademark? A new trademark can be created in many different ways but usually by creatively working and forming an idea or to get help from professionals in the field.

Our team of experts will guide you through both legal- and communication related challenges. We already know what kind of problems that can occur, and often will, if you don’t take proactive actions from the beginning. The Start-up is a little bit different if you acquire an already registered Trademark than if you create a brand new yourself.
We know the difference! Contact us if you need guidance on the way.

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Step 2 – Decide for a trademark name

The naming process of a new trademark can be very time consuming. Does it give you any advantage in using a Trademark name that is describing for your product or service, from a communicative point of view?

Or is it a better idea using a made up Trademark name, from a legal point of view?

Is it even possible to combine both of them? The answer is yes! According to us, the best Trademark names are the wordings that gives the consumer a hint about what service or product the trademark might be used for –  and still not be descriptive. These are called –  evocative names. Let us take the word Igloo for example. Which associations do you get when you hear the word? Freezing, cold, snow or maybe ice? If the trademark Igloo is used for ice cream,? Perfect, they have done their home work. 

To find the “perfect” trademark name is a difficult task. Otmore recommend that you find 3-10 names that you are interested in and let us start with a Preliminary Investigation Light to see which names that are most likely to pass an application.


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Step 3 – Products/Services and markets

Which countries/regions are you interested in expanding to within the coming year?

The next five years?

Which products or services are you interested in selling in the near future?

The questions above are extremely important to ask yourself before applying for a Trademark. We need the information so we can do the Trademark Searches correct in the next step. 

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Step 4 – Trademark Search Report – Light

The Trademark Search Report – Light, will give you guidelines if your suggested trademark is possible to register or not. Based on the list of possible trademark names (mentioned in Step 3, 3-10 names), we will make a light search in the countries/regions/classes that you are interested in using your trademark in.

In the Trademark Search Report – Light, we will search for identical trademarks.

The result will give you a first indication if the Trademark in mind is possible to register and if there are any identical Trademarks already registered.

We will also look at the availability of the most common domain names suitable for your trademark.

After you receive the report you can decide to either continue with the process or abort and start with the naming process again.

Here you find more infromation about the Trademark Search Report – Light.

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Step 5 – Trademark Search Report – Comprehensive

The results of the Trademark Search Report – Light has hopefully given you guidance on the way for your new Trademark. Next step is to further investigate the possibility to register the Trademark through the Trademark Search Report – Comprehensive.  The service includes:

Results from Trademark authorities – Is the trademark descriptive?
Comprehensive investigation looking at both identical and similar or misspelled registered trademarks.
▪ Company names
Domain names
Content search online (this part can be extended with an analysis through a business intelligence monitoring program)
▪ Our attorneys will analyze the marks that pose a risk and give his/her opinion
Linguistic search – Your searched mark name will be manually analyzed by professional translators (extra)

Here you can find more information about the Trademark Search Report – Comprehensive.

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Step 6 – Domain name registration

An analysis will be made to see if there are any registered domain names for the exact name that you want to apply for. To begin with, we will prioritize the countries/regions that you are interested in expanding to within the near future (five years). These domain names will be registered before the trademark application will be sent in.

Here you can find more infromation about out domain name services.

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Step 7 – Trademark classification

In a trademark application, you get a protection for the specific name or figure in the product or service classes that you have applied for.

So, how do you classify your products and services?

The Trademark system is built with a so called classification system so you can distinguish different product- and services from each other. The best known and used system is called after the city of Nice. The International Nice-classification system.

There is a total of 45 different Nice-classes. 34 product classes and 11 service classes. Depending on what kind of Trademark you are going to create a classification has to be made for your future products and services. The Trademark classification process is not easy and you have to include parts like; future strategies, legal parts and industry Know-how.

When you have sent your Trademark application, it is not possible to add more classes or markets afterwards. All changes you want to do require a new application, which is both time consuming and expensive.

Or recommendation is that you always think five years ahead. When you, hopefully, have your trademark registered, you have five years to start using the trademark in all registered product- and service classes. If you aren’t using it, there is a risk that another party starts a cancellation process of your Trademark – in, not used classes – or in worst case, the whole registration.

Otmore can help you in the entire process. Contact us for more details.

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Step 8 – The application

The application will be submitted in the countries where your company is planning to operate in. In the Trademark service section, you can find more info about the different types you can apply for.  

Our recommendations is that your registration strategy, at least, are for the next two years. Even preferably, five years.  A registered trademark is valid for 10 years before you have to renew it, this means that, once again, you need to make sure that your trademark application is as comprehensive as possible before submitting it.

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Step 9 – Trademark Watch & Monitoring services

It is very important to monitor and watch your trademark, especially since most companies are active online.

It´s always, you as a trademark owner who is responsible to look after your rights. The authorities wont alert you if there might be a collision risk (in some jurisdictions they will – but they are few) between two trademarks. This means that you have the total responsibility to watch and secure your brand.

By using our monitoring watch services, you will be notified if there is a trademark application being submitted that can be on collision course with your trademark, and you can take proper actions in time. For example an objection or c&d.

We can also help you with watching services for domain names, search for infringement on auction sites and other brand- and trademark related services.

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Step 10 – Await registration

The handling process of a submitted trademark can vary a lot depending on where you have applied for a trademark. This means that you need to plan in advance to send in the application so that it can be processed and registered before you intend to start using the trademark. For example, in many of the South American countries there is a application time of approx. two year.

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Step 11 – The trademark is registered

Congratulations! Finally your Trademark has been registered,

You have now an exclusive right for the word or figure you did apply for.

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Step 12 – Communicate

This step is when you really can start to Communicate your new Trademark.

The Communication strategy is set much earlier in the process and we work hand-in-hand throughout the whole registration process together with Otmores Communication experts.

We will guide you from the beginning to the end in the process.

Please fell free to Contact us so we can help you set up a plan for your new Idea!

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