Have you thought about getting a trademark for your logo and wondered whether you can do it yourself?
When I was deciding whether to apply for my own trademark, I wondered about the need for using a trademark attorney. I had a look at the process, didn’t think it was particularly difficult and therefore decided that I couldn’t justify the cost. Since then I’ve had the opportunity to run into someone that actually specialises in the area, Yvette Kwei of Epiphany Law, and took the opportunity to pick her brain about what could have gone wrong.
When I posed the question, her answer was a resounding LOTS! It seems that there was a lot I didn’t know and if I had my time again, I may have chosen to do things differently.
Things you may not know about the trademark application process:
Selecting the “class” of goods and services
One of the things that you will face when you are applying for a trademark is a decision on what class your trademark fits into. You will be given a choice of classes using a “pick list”. It sounds straightforward enough until you realise that there is no obvious fit, or it is unclear whether your product or services falls into multiple categories. Trademarks involving e-commerce and software seem particularly difficult as IT is such a fast moving industry that the legislation is still playing catch up. Yvette gave a couple of examples of grey areas that she’s come across:
Registering words, logo or tagline
Choosing whether to register words or logo (whether in colour or in black & white) is another area that the inexperienced might stumble. Yvette rightly pointed out that many businesses choose to re-brand, re-design their logos or change their taglines and an incorrect registration at the start could mean additional expense or a potentially worthless trademark.
Did you know that registering your logo in black and white gives you more flexibility?
Paying for your registration early
When your trademark is first approved, you are allowed 6 months for payment. Many businesses would be tempted to delay making payment for as long as possible without realising that any delay in payment allows the opportunity for an objection to your trademark.
If you plan to register your trademark internationally, it pays to know that if you register within 6 months of your Australian registration, you can use the Australian registration date as your registration date.
Consequences of getting your trademark application wrong
If you are going to trademark, it seems obvious to say you should do it right, otherwise what would be the point? The value of a trademark is like a having a certificate of title over a property. It’s proof of ownership. It gives you monopoly over the trademark and allows you to stop others from using it. So getting it wrong means you potentially lose all those benefits, or it ends up being costly to rectify any inadequacies.
“In some cases, our services actually end up costing a client less than what they would have incurred applying on their own. This happens when:
a) we need to apply for it again, more accurately or more broadly; or
b) a product or service falls into multiple classes and with a bit of clever drafting, we can sometimes reduce the number of classes involved.” ~ Yvette Kwei
Hopefully, this post has provided some insights into the world of trademarks, and good luck should you decide to give a go on your own!
- Should you register your trademark by yourself (Epiphany Law)