Trade Marks Strategy & Registration
You have arrived in the right place for a cost-effective, quality trade mark registration. We apply “legal design” to increase your trade mark’s monopoly power.
Top questions answered
What 7 laws protect my brand, business or trading name?
Trade mark registration is the silver bullet way to protect your name, logo or product label. Also relevant are your:
1. company name
2. business name registration
3. domain name registration
4. common law trade mark rights
5. copyright in original logo or label designs
6. trade practices law
7. passing off law.
What makes a legally good trade mark?
Not all registered trade marks are equal. Despite being registered many trade marks are of poor quality. They are of little legal value, they create little monopoly that can stop others using similar or identical names or other brand elements (label designs, fonts etc).
To register a legally valuable trade mark, as a general guide, be inventive, seek distinctive marks and stay away from:
1. descriptive words in the dictionary
3. geographical names
4. really long names
5. long-winded slogans
6. using “A” or “The” as the first word of the mark
7. filing generic under-designed logos
Securing a high quality trade mark begins with name selection based on knowledge of your target market. We can brainstorm your selection of a name. We’ll then do a professional name availability search investigating Australian and overseas trade marks, domains, business and company names, social media handles and brands. If that search landscape is clear, we’ll prepare descriptions of your goods and services (customised for your market) and select appropriate trade mark classes (45 to select from). We’ll then advise on who should be the owner/applicant.
Finally, we’ll file the application and monitor it through the examination, any opposition and the final registration stage. All up you receive a registration as well as legal design – a brand strategy with armour against potential competitors, pirates and other infringers of your property rights.
Why DIY trade marks can be a waste of money
Firstly, a quality registration is an investment minimising the longer term cost of legally defending a mark to maintain a monopoly. Secondly, we apply legal design to minimise examiner objections or third party oppositions.
The weaknesses of DIY trade mark registrations usually become apparent years later when it becomes apparent they do not provide a good scope of monopoly. The tell tale signs of Do It Yourself trade mark registrations are obvious to experienced trade mark attorneys.
Each of the follow mistakes limits the quality of a mark, limits the scope of the registration’s monopoly:
1. poorly selected mark
2. limited or minuscule description of goods/services
3. wrong trade mark owner as the applicant
4. mark is inconsistent with applicant’s identity or other brand elements
What's better, registering a word mark or a logo mark?
It depends. Generally, a word mark registration is better, providing the potential for a greater monopoly. However, a word is usually more difficult to register. Call now for a complementary discussion on what will work best in your situation.
How long does registration take and last?
Ten months from application to registration. That is for an application with no examiner’s rejection or third party opposition. Registration lasts for 10 years, after which an additional official fee is required for renewal every 10 years.
A trade mark examiner objects to my application. What can I do?
Based on how extensively you’ve used the mark, it may be possible to contest a trade mark examiner’s rejection.
We are good at drafting evidence-based documentary responses to change an examiner’s mind. Speak to us today and see whether we can help you salvage your trade mark application.
My brand will operate globally. How do I do that?
Trade mark registrations are jurisdiction-specific. File for registration first in Australia and use the base registration to apply to secure registration via the World Intellectual Property Organisation (WIPO). If a small number of countries are targeted it may be more economical to use attorneys in those jurisdictions. Be warned, obtaining trade mark registrations abroad involves significant cost and involves complexity. Speak to us to first develop a cost-effective trade mark filing strategy.
$550 – name availability search (covering trade marks, business and company names, domain names and brands online) + development of a trade mark strategy + trade mark application filing (including GST and official fee to IP Australia)
$440 for preparing, filing and reporting on one trade mark in one class, inclusive of GST and IP Australia fee.
To increase your monopoly we develop customised descriptions of goods/services and don’t use the IP Australia pick list.
International trade mark registration
- Information on what business offering the mark is used for
- The mark (if it is an image, supply that image)
- Applicant’s name
- Applicant’s address (can be an address abroad)
- Any existing evidence of use of the mark in your business
- How long the mark has been used for by your business
- For international applications, a list of proposed jurisdictions
- Existing application or registration details in another jurisdiction for the same mark