Common Trademark Misconceptions

Common tradmark misconceptions

Trademark applicants often make mistakes in applying for trademark protection. Trademarken helps reduce these potential pitfalls. Some of the common mistakes that can cause problems for your trademark application are set out below.

Your trademark is not capable of distinguishing

Your trademark should be distinctive. In other words, it should be a sign that other traders are unlikely to use in the course of trade. For example, trademarks that describe your goods and services (e.g. 'Fresh Milk') may not be acceptable.

Names and descriptions are difficult to register as trade marks because other traders have a legitimate need to use these terms to indicate their similar goods or services.

Your trademark is the same or similar to an existing trademark or trademark application

Your trademark application could be rejected if it is the same or similar to an existing trademark or trademark application in respect of the same or similar goods and services. Using Trademarken, our trademark filing software will automatically conduct a prefiling availability search in respect of your trademark and your goods and services to find any potentially conflicting trademark.

Trying to change your trademark application once filed

Once your trademark has been filed there is limited opportunity to make amendments to your trademark application or to your goods and services, especially after details of your trademark have been published by the UK trademarks office. For example, it is not possible to add goods and services to your application if such goods and services were not included in your original application.

Incorrectly naming the Applicant/Owner of the trademark

The trademark applicant is the 'owner' of the trademark and can be a natural (e.g. John Smith) or legal person (e.g. My Company Pty Ltd).

However, the applicant of a trademark cannot be a business or trading name. If a business or trading name is to be used, the trademark application should be filed in the business or trading name representatives.

Incorrectly choosing your goods and services

Incorrectly choosing your goods and services may cause problems for your trademark application. For example, if you apply for goods or services that you do not actually trade in, there is a danger that your trademark application will overlap with a similar trademark application in those goods and services. Furthermore, if a competitor thinks that you are not using your trademark in respect of the goods and services in which your trademark is registered, the competitor can apply to have your trademark registration removed for non-use in respect of those goods and services in which it is not being used., or omitting the goods or services you do trade in

Last modified:03/10/2013