You need to start somewhere, just like any other brand. It is very critical to protect the trademarks, which are generally words or symbols or a combination of both. If a small business did not register its mark, then they lose all the future opportunities to make a profit from the value of their brands. The mistake of not protecting the trademark or say effectively protecting the trademark shall bring more troubles in the form of securing the imitators from copying your very own brand.
Fortunately, the troubles, as mentioned above, are entirely avoidable. Every business owner like you has to classify the trademark correctly and register with Trademark Registrar having jurisdiction. For example, if you wish to avail protection of Trademark in India, then register with the Registrar of Trademark in India. There is no registration applicable all over the World. Similarly, to secure your intellectual property rights in the US, you should apply to USPTO or any other territory as you may like to protect. Most small business owners make a mistake in getting the trademark registered only in the regions where they are or intend to supply their goods or services. This is where most of the small business owners make a mistake by not registering their trademarks.
Sometimes the small business owners tend to find shortcuts and cheap methods to make an application for filing the trademark. They avoid investing enough time and money by consulting an experienced trademark attorney for analyzing the feasibility of trademark registration, proper classification based on the business activities for which the trademark is intended to be used. It is like creating more problems instead of solving one.
In the background of the above discussion, I would be listing the ten most common mistakes which a small business owner makes with their most valuable asset, i.e., trademark. Go through them carefully and follow the steps to avoid the mistake — however, the following essential things you must do to protect your brand.
Table of Contents
Registration of the Trademark
Trademark registration is the first step to asserting your rights and to protect the same from being copied. The application for the trademark may be filed in 45 classes based on the business activities. One mark may be registered for multiple categories of the trademark. The registration of the trademark is a legal process which in most cases passes through the following steps.
- Classification of Trademark Based on its use or proposed use
- A public search of the trademark in various databases
- Drafting of the trademark application
- Filing of the application before the registrar of trademarks
- The examiners of the mark then issue its examination report
- Filing reply to the examination report
- Show cause hearings
- Third-Party opposition proceedings
- Publication in the Trademark Journal
- Registration of the Trademark and Issue of the Registration Certificate
- Obtain a Certified Copy of the Registration Certificate
Use the Trademark
The continuous usage of the trademark is necessary to keep the claim over the mark in force. Section 47 of the trademark act 1999 prescribes specific reasons based on which the trademark registration may be cancelled. A non-use of 5 years is a valid reason for the cancellation of the trademark.
Renew the Trademark
Unlike other forms of IPR like Patent, Copyright, and Design, Trademarks can be renewed for an indefinite time so long it is in use. The validity of the trademark registration is ten years; however, it can be renewed for a further ten years for any number of times.
Though it is not necessary for you to hire a private trademark attorney for legal advice, filing of the trademark application, hiring an experienced trademark attorney is not a bad idea at all. The kind of value is at stake on a trademark, definitely makes a strong case for availing the services of an experienced trademark attorney for yours. If your mark is worth protecting, then it is also worth the investment.
Here are the top 10 mistakes which a small business makes concerning the trademark.
Though most of them register the trademark, they do not secure the trademark by way of acquiring domain names, use of the trademark in the URL, or social media profiles. In a situation where someone else grabs the domain name or use the similar social media profile name using your trademark, it is going to be difficult to enforce the trademark. Eventually, it would lead to a time consuming and costly legal battle with the imitator. Assume if someone else starts publishing the contents on social media from the profiles which are similar to your trademark, and their content is inappropriate. It will have a very, very bad impact on your business and can spoil your reputation in the market. The solution is to think of possible breaches and acquire all domain and social media profile names immediately.
You never thought of registering your trademark and, as such, did not register the mark at all. Well, what should I say, come on don’t waste time and take steps to file for trademark registration in India and to other countries where your trademark is likely to be used. Under the Madrid convention now, you can make an application to multiple countries from India. Please note that just because you registered a company name with the registrar of companies or a firm with the registrar of firms, it does not give you any legal right as it will come to you after registration of the trademark. You still need to file for registration of the mark.
Your business name is descriptive, or it contains the name of service or goods itself. Or it talks about the quality and quantity then you would probably never get the trademark registration as it would be refused by the registrar of trademark either on absolute grounds of refusal or on the grounds of relative grounds of refusal. My suggestion would be to change the business name itself as with the protection of trademark registration, and there is no point running the business with that name. Take help from a reasonable trademark attorney, and find a better business name, do a public search, and file for registration of the same.
You are assuming that your business name is unique, and you have made it up; hence registration is not necessary! Well, I am afraid you still need to get the name of the business searched in the trademark databases and make an application for the registration. An unregistered trademark can be protected under common law; however, to claim the damages, you still need to get it registered. The legal fight for a registered trademark is going to be more comfortable in comparison to that of an unregistered trademark.
You searched the trademark in the public search facility for trademark or any other online search sites. You found no matches, and you assumed that the trademark is available for use. Well, the search of the trademark is not like google search; you need to understand the law of trademark and must have experience of doing a comprehensive trademark search. When we say that your mark should not be the same or similar to someone else’s trademark, then by similar, it means visually similar or phonetic similarity. In other words, you should also conduct searches to find potential visually or phonetically identical trademark. Moreover, there is always a risk of adopting a trademark that is not capable of being registered.
You think that the name of your business includes your or family name, and as such, you do not need registration, and it is safe. Please be informed that the use of the name of the person, places, product, or services as such within the trademark is the absolute ground for non-registration under section 9 of the trademarks act, 1999. Hence you are advised to change the business name, which can not be registered as a trademark under law.
You have registered your trademark in any one class out of 45 classes in which a trademark can be registered and assumed that you have got exhaustive protection for your entire business. The classification of the trademark is done based on the nature of business or activities. From class 1 to class 34, the classification is for Goods, and From 35 to 45, it is for the services. So if you are registered under one class, then you get benefits for that class only. You should keep checking if you need to register your trademark in any other category based on the new business activities you would have started.
Though you have registered your trademark, you are not using it. The registration of a trademark is valid for ten years and can be renewed at any time; however, if the trademark is not used for over five years, then it becomes a valid ground for the cancellation of the trademark. Any person can make an application for rectification of the register of the trademark on the grounds of non-usage.
You are not maintaining your trademark; as said earlier, to keep the ownership of the trademark you need to take appropriate care and keep the trademark using for the purpose for which it was registered and always ensure to make an application for renewal of trademark before the expiry of the registration of the trademark. Further, always take care of keeping the register of trademark up to date with updated particulars of the owner of the trademark. In case you miss to renew the trademark, you can still get it by making a new application of the trademark.
You are not monitoring the trademark. Your rights are useful only when it is not interfered with by anyone else. You must be watchful for any potential infringement upon your trademark. You should develop a habit of checking the public search of trademark and google or any other search engine to find out any potential breach to your brand.