4 common mistakes made when filing for a TM application
When the microblogging and social media network company Twitter, tried to secure the trademark for the word “tweet” in 2009 they were denied because the word was already owned by the advertising company, Twittad. When they later settled an agreement in 2011, they had to secure it for a considerably higher amount by buying the word from the owners. Not filing for the trademark in time is one of many mistakes’ companies make when filing for a TM application.
In this article we will review the 4 most common mistakes companies make when filing (or failing to file) for a trademark registration. We will also review some differences between jurisdictions with the EU and Sweden as an example.
Mistake number 1: Launching of a trademark and filing for the registration too late.
When launching a new company one of the first important steps is to, unlike Twitter in the example mentioned above, start by securing the word of the company name and / or the trademark of any important products. Besides finding out that your selected name is already taken, another risk are, hijackers. A non-existent problem 10 years ago, hijackers are today a common phenomenon that today unfortunately is an evolved industry originated from the black market. Hence, to avoid these types of misfortunes it’s important to file for an application 6-12 months before the planned launch of the new trademark.The hijackers also know how to move online, registering domain-names on known (and un-known) trademarks, already aware that the price tag on the for example, .com domains can be surprisingly high.
Mistake number 2: Risks with only registering the logo
If you are applying for a figurative trademark protection (a logo,) it’s important to remember that the registration is only valid if you use the logo as it is registered. Problems that can arise from only filing to register the logo are for example that if you change parts of the logo, the colors or the form, you will need to file for a whole new trademark protection. You will then also receive a new application date and you lose all the years of previous registration. Another issue is that if anyone files for protection before you do, the other company will have the advantage. In other words, a word application is always the way to go.
Mistake number 3: Not thinking ahead when filing for the protection
The third mistake that companies usually make is not asking themselves, what am I going to potentially be selling in 3-5 years from now? If you sell clothes and shoes, it is likely that you will be selling for example, bags jewelry and sunglasses or perfumes. Like mistake number one, here it is important to be out on time. The first applicant of a certain word is the one who first will be processed, and you do not want to come out satisfied after the marketing meeting, just to realize that the name is already taken. One solution here is, instead of sending in a completely new application, you can apply for a broader classification directly.In some jurisdictions there are usage requirements of the trademark that can be extended to up to 5 years and this makes it possible to file now and decide later.
Mistake number 4: Not being aware of the differences between jurisdictions
Let us take the Swedish and the EU-jurisdiction as an example to illustrate how knowing the difference can be crucial when filing for a trademark registration. One major difference is that the authority in Sweden makes an assessment where they look at whether there is lack of distinctiveness in compare to other words in the language, important then is the originality of the word. Another difference is that the filed word should not be able to be confused with a registered trademark valid in Sweden nor cause disarray for the consumer. These distinctions are not made in the same matter in the EU jurisdiction.
To recap we can see that one can retrieve a lot of knowledge both from the experiences from other companies and by knowing how the jurisdictions apply the differences in the rules and their assessment of a trademark application. Meeting deadlines is important in almost all areas and in trademark registration they can be more than crucial. There is a saying that if you are not first you’re last and in trademark registration this saying can be very real. The sum that Twitter payed Twittad is for instance officially still unknown.
Do you want more information on how to set up a proactive IP strategy? We at Otmore are always up to date with current events in the industry, contact us today and we’m happy to help!
Article written by Sergio Villamizar