Posted by : Suzanne Harrington
How to avoid Business Identity Theft
FIVE KEY REASONS WHY TRADEMARK APPLICATIONS FAIL AND WHY IT MAKES GOOD BUSINESS SENSE TO USE A TRADEMARK SPECIALIST
Once a business owner realizes that just having a business name registration does not mean that they own that name, they can take the recommended step of getting exclusive rights to their name through trade mark registration.
However, trademark registration, which is generally done on a country by country basis, is not a straightforward process and there are many not-so-obvious traps that business owners can fall into by filing an application themselves. These are five common reasons why trademark applications can be rejected:
1. the trademark describes or is not distinctive of the goods/services.
2. the trademark is a generic term in their industry.
3. the trademark is confusingly similar to an existing trademark
4. the trademark is basically a common surname
5. the trademark describes or is deceptive about the geographic origin of the goods/services.
In addition, by undertaking a process they are not familiar with and don’t understand, the owner may not follow through to registration because:
· a specialist search was not done prior to filing and, on examination of the application, an existing similar mark is raised as an objection which is too close to the owner’s brand
· the owner does not know how to respond to the examiner to overcome the objection/s raised
· an objection has been raised by the examiner which cannot be overcome because the application should have been filed another way ie the owner is not aware of the different strategies involved in filing an application.
· the owner does not monitor the important dates during the application process
· the owner does not understand the phases of the application process and does not pay the registration fee when necessary.
Below is a bit more detail on the main reasons for rejection of a trademark application:
The trademark describes the goods or services or is not distinctive of the goods or services
The basis of one person, business or company having exclusive ownership of a brand or trademark is that that brand or trademark is unique in the industry in which the owner trades. Examples of unique brands would be Apple, Optus, Qantas as they do not indicate to the marketplace initially what the owner’s goods/services are.
The trademark is generic to the industry
An owner will not have exclusive rights to a word that is generic to the industry in which they trade eg ‘Computer’. While a generic term can be included in a trademark ie Apple Computers, they will have no exclusive rights in the generic term.
The trademark is confusing similar to an existing trademark
If the owner is trying to register a mark that is similar to an already registered mark in the same industry, the application will be rejected. If a trademark is likely to cause confusion in the marketplace as to ownership of the goods/services, the second applicant will not gain registration.
The trademark is basically a common surname
An owner will have objections raised if the trademark contains a surname which appears more than 270 times in the Australian Electoral Roll eg Brown’s Hairdressing.
The trademark describes or is deceptive about the geographic origins of the goods/services
An owner is unlikely to gain registration of these types of brands eg Cronulla Wines (which is a well known beach are but not a wine growing area).
The other common mistake business owners make is in exporting their goods into another country before checking whether their brand is already being used on the same or similar product. If you intend going into another jurisdictions, have searches conducted to make sure your brand is available to use and then take steps to protect the brand in that jurisdiction as well. You will then own the brand and can stop competitors from copying you within that country.
If you are serious about getting exclusive rights to your business/product name and want to avoid the above pitfalls, get help from a trademark specialist. Do this before going ahead with setting up a business structure and having a website designed so you don’t wasting time, money and energy on a name that has already been registered
