Names such as product names or company names can be protected with trademarks. My first advice would be to ask a patent attorney or an attorney at law to help you with protecting the name because they are highly experienced. But if you want to get a first glimpse of what is needed to protect a name with the trademark, then this article is for you.
First of all, you want to compile the most important information needed to protect a name, and this information is basically the sign. So the name by itself, then the goods and services that you want to be protected, for example, ever is protected for computers or Levi’s, is protected for jeans or clothing. And so you need to specify what you want your trademark to protect. What kinds of goods and services and then, of course you need the owner of the trademark, the information? Let’s start with an example, imagine you will have a dance studio and you want to open it under the name of marimba.
Then you need the following information. First of all, the sign which is marimba, then you need the goods and services that you want to protect. So, for example, the dance instructions or dance lessons are all in class 41 or if you also want to have let’s say you have a bar inside your dance studio, then it would be in class 43 or all, as you can see, all goods and services that Are existent are grouped into classes 45 classes, so there’s class, for example, for software and apps like class 9, or there is class 16 for a printed matter or there’s all different kinds of classes.
So 41 is important for you. If you want to open a dance studio and then the three, maybe four serving drinks or snacks, or something if you want to basically tell other bars and and restaurants not to use marimba, then you need protection in 43. And if you want to do some retail in your dance studio, let’s say you want to sell shoes or clothing and you want basically a shop or an e-commerce site under the name, marimba selling.
All these things, then you want to protect your trademark item class 35 with all the regional services. So then, you could tell other competitors not to use marimba as a name for a shop for these kinds of goods, and so you get an idea and you can look through all these classes and see if there is some if there are relevant goods and services. In these classes, for you, for example, if you want to protect your trademark for an app or for surf or software, then you need protection in class 9.
Then, as last piece of important information, you need the name of the applicant. That sounds very simple, and typically it is so. You just need a company name and the company address, but sometimes it’s complicated because in my experience, a lot of company owners in their signature of the emails they write the company name in different way as it is in the company register. Please use the writing as it is in a company register to make it easier later to enforce your trademark, and the information has to be really correct.
So the correct streep, the correct place, the correct company name, everything and one other thing where it can get complicated is, if you don’t have a registered company and you want to register the trademark in your own name. Basically, in your own private person’s name, and then you need your private address, a lot people use the company address, basically their office location, but that were likely, at least in Germany not be enforceable, because that person doesn’t exist at the for, for legal purposes doesn’t exist At the office location, but rather at the private address location, so that’s one thing to consider.
One other thing that you have to consider is that there can be earlier similar trademarks. So, for example, if you want to register a trademark pmw for cars and you go ahead and file a trademark, they’re, typically the trademark office, except, for example, the USPTO most offices. They don’t really search for earlier similar trademarks, so it will be registered and you start producing cars under the name of pmw and three years later.
Bmw tells you to stop and then you come to me and I say: okay, it’s very close, better! Maybe stop so then you have to not only stop using the trademark, but also you have to probably pay damages, and that can be, for example, the revenue that you, the profit that you made of the cars or a reasonable license fee. And then you also have to pay that twenty fees and so on. So it can be really difficult.
If you don’t really make sure that your name is it’s free to use. So before you file for trademark or use a name for a product or a company – and you should you don’t have to – but you should look whether there are similar earlier trademarks and if you want to get a good overview, how to do that and for free. Basically – and you can look at one of my other web articles, where I explain how to search for similar earlier trademarks, of course, that search cannot be.
I cannot be held liable for that search if you want an opinion from an attorney or from a pet that journey where that attorney is liable for then, of course, you have to ask me all my colleagues to conduct that search and whatever I tell you, of Course I’m liable for so, but but if you want to do the search by yourself feel free. I made a article and I linked in the day as a link in the show notes for that article, where I explain in great detail how to conduct a search for similar earlier trademarks.
So once you made sure that there is no conflicting earlier trademark, then you can actually fire the trademark and typically in past times you had to print out a form, fill the form in and then send it to the patent or trademark office and or fax it Or something like this, but nowadays most patent and trademark offices of our webfiling or at least electronic filing. So you can just go to the website of the, for example, a german patent trademark office or the USPTO or EU IPO or other offices.
And then you can basically get typically easily find the place where you can file a trademark online, and at that forum you will see that you at the filing form. You will see that you have to fill in these three pieces of information. Let us at least the most important pieces of information design, the goods and services and the applicant, and then, of course, you have to pay and most offices, they accept credit cards but, for example, the German and Trademark Office just accepts wiring for typically like, if you Use the web form, of course, we as a patent law firm or – and we also handle about four and a half thousand trademarks.
We have an electronic program on our computers and an electronic certificate where we can file directly and electronically so and we can pay directly. We don’t, we have an account with office and that’s a little bit more convenient. But if you want to do that yourself, you can go ahead and use the web form. Most offices offer that, as it was true with the search and of course there is no attorney to be liable for anything you do by yourself.
But so if you want to be more safe on the safe side, maybe you should ask a patent attorney or an attorney at law that is experiencing in trademarks to do the fighting for you, then, once you find the trademark, the procedure is a little different from Office to office, but in general the office typically examines the trademark for formal deficiencies. So if you made any form of mistakes, let’s say you forgot to fill out the form completely or you filled it out in the wrong way.
Then you get typically you get office action asking for fixing the problem and also the offices. They will examine the trademark for descriptiveness. Basically, so you can get a trademark Apple for computers, because Apple is not descriptive for computers, but what you can’t get is a trademark. Every four fruits, because Apple is a fruit and it would be descriptive and that cannot be monopolized. Basically, so you cannot really own the name Apple for fruits, because then no one could use Apple for fruits.
So the trademark office will examine all incoming trademarks for absolute grounds. That means descriptiveness basically, and once your trademark is registered, you can basically, first of all that’s the main purpose of the trademark. Ask your competitors not to use that sign for the protected goods and services and also you can license out the trademarks. So, for example, if you have a trademark marimba for dance studios, then you can end.
You are only located in a certain city and you and other than studios in other cities want to use the name and you can allow that for a certain license fee and then you can make a license agreement and then you can earn money with that. So it’s another way to monetize your trademark, so I hope this article was helpful if you like this article and you are new to the blog and you want to learn more about patents, trademarks and designs in the future, subscribe to my blog, if you like, the Article of course, hit like the article.
If you have questions or comments, please post your questions and comments below this article and, most importantly, protect your intellectual property and goal make it count.
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