Everything you need to know about trademark protection and registration

trademark Mar 26, 2018

Interview with Stefan Weynfeldt
Co-Founder of www.trademarkprotector.com

Hubbe.rs connected with Stefan who started his career in compliance and decided to open his trademark registration company. He felt that there was a gap in the market where lawyers were not driven to provide targeted and straightforward solutions while business owners needed help beyond a pricey registration process.

Trademark Protector offers honest advice to young companies with excellent customer service. It provides a free search to determine how difficult it will be to get the registration done. Trademark protection is a complicated process, and our goal is to produce the name that requires the minimal amount of litigation.

1. What are the essential steps of preparing for trademarking a product?

  1. First, we research the trademark of the name and logo in the government database. Risk comes from people who haven't registered a name but actively using one for sometimes long years. When a name is submitted for approval, and any of these unregistered brands stumble upon something similar to their brand name, they can object to the trademarking of a new brand.
  2. It is crucial to acknowledge that trademarking is a lengthy process and once the submission began, you cannot change the details. If you want to add a class to your application, in fact, you have to start a new application.
  3. The search is country-specific, the U.K. has one of the shortest and most straightforward procedures. Hence we often suggest to companies to register their brands first in the U.K. Various countries take weeks just to confirm if the application (not the actual trademark) is accepted.
  4. Although anyone can do in-depth research on the Internet, in phone books, and other available resources, however, this isn't enough. We do offline and online searches in specialist databases for a more detailed search.
  5. Checking just the actual name is not sufficient, you have to also check for similarities because those can cause a problem later too.
  6. Once we identified similarities or matches with the brand name, we need to reach out to every one of them and come to an agreement to sign a co-exist document. This agreement helps to protect the existing brand as well as the new brand. Hence it is in everybody's best interest to have one.

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2. What are the actual steps of the registration?

  1. A registrar registers the brand name.
  2. The name has to be distinctive and must not be descriptive. It means that you cannot just go and decide to register common names such as coffee, drink, restaurant, bag, shoes, car, etc. you need to have a specific name that makes your brand differentiate from others.
  3. Approved applications are published, and everybody who is already holding a trademark can review your name registration request.The objection period is generally between 3-15 months depending on the regulations of the various EU countries. During this open period, anybody can object, but they need to pay a fee when they do. Thankfully this approach stops people from opposing unless they have a strong reason to disagree with the trademarking request.
    Of course, any objection naturally delays the process and requires lawyers to get involved. They coordinate until the parties reach a co-exist agreement. If the name is still not approved, you can take your case to court, but it is a lengthy and expensive process.
  4. When you register a trademark, you have to use it within five years. Otherwise, it expires. This way people can't hassle brands with pre-registering their possible brand variations.

3. Is there a difference between trademarking a product or a service?

There are 45 classes to determine where the brand and the offered services and products belong. This classification helps to determine a focus, and when you find a brand that belongs to a different category than yours, you don't have to ask for permission as you don't share the same class.

4. What are the dangers and challenges of trademarking?

  • When a brand new business encounters a trademarking issue, they can simply change the name and find something that can be trademarked quickly and without difficulties (and without added lawyer fees).
  • Established organizations cannot proceed the same way as their name is used and well known by their customers for long years. In these cases, it is a delicate procedure to reach an agreement with the opposing trademark owners, and it most likely requires hiring a lawyer.
  • The biggest problem is when your application is approved, and you realize that you have done something wrong. For example, you register your brand with the wrong class.
  • It is always better to register more classes at the beginning so that your trademark can accommodate future brand expansions such as moving from producing only clothes, into selling curtains, and bedsheets as well.

5. How to proceed when I want to trademark my brand in multiple countries?

Different countries need to be trademarked separately, but once one country has approved your registration, you can copy the existing data and use it for your next country's registration process. We recommend starting the registration process with the U.K. because it is not only fast but also you pay just £200, and they confirm the acceptance immediately.

Stefan is expert in trademark registration in the European Union and the United Kingdom.

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Hubbers Team

co-writing stories about Hubbers creators, experts and investors co-building a better tomorrow.

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