Your trademarks are your commercial identity, that’s how your clients can distinguish your products and services from everybody else’s. When creating a brand, there are several ways to reduce trademarking costs. Here’s 6 of them.
1. Focus only on one brand
Building and protecting one brand is naturally cheaper than building multiple brands. For some large companies with diverse product portfolios it makes sense to have a diversity of brands (for example, it makes sense to have a different brand for rat poison and baby food), but such approach does not fit in a startup budget.
So create one brand, and if you have different products or solutions, use descriptive sub-names for them. Big companies also use this approach. For example, Google names many of this products this way (for example, “Google Maps”, Google Calendar”, “Google Analytics”, “Google Photos”, “Google Translate”, etc.).
Using this approach you will save a lot of money in both marketing and protecting your brand. Also, with this approach your every product contributes to the main brand, making brand building and protection also more efficient and effective.
2. Choose a name that is distinctive
From legal point of view the benefits of having a distinctive name are clear, as mentioned earlier. Also from cost point of view, protecting names that are distinctive, i.e. non-descriptive, is in most cases much cheaper than trying to protect or enforce a descriptive name. If your name has a high degree of descriptiveness, you will be faced with a lot of objections from intellectual property offices when you try to protect your brand.
Here are some examples of descriptive names that are difficult or impossible to trademark:
Note (for note taking software)
Easy Invoice (for invoicing software)
Smart Energy (for energy saving software)
TrafficWatch (for traffic monitoring software)
Having a little bit of originality makes trademark protection easier. Here are some good examples:
Evernote
QuickBooks
DropBox
AirBnB
If you choose a descriptive name, you are often faced with two poor options. Either your brand cannot be protected at all or you have to spend a lot of money getting it protected. Both are bad outcomes for a cash-strapped start-up. If you choose a distinctive name, you will in most cases have it protected for much lower costs.
Why do companies use descriptive names? Such a name may also be easier to communicate to others. The problem is that you might not own your brand legally. Remember that trademarks’ function is to distinguish your products and services. Descriptive names cannot do that. There’s a reason Nike is not called “A Great Shoe Company” and Coca-Cola is not called “Brown Liquid Full of Sugar”. Make your brand distinctive and memorable so that it can be a basis for a strong brand. The great side effect of this choice is trademark protection and enforcement costs will be much lower. You will get more for less.
3. Logo considerations
If you have chosen a distinctive name that can be protected, then you might consider toning down the distinctiveness or your logo. If your logo is very distinctive (original), you should protect it. However, if you go for a more minimalist logo (for example, a sleek font with stylish colour) it will often be sufficient to protect the just the word and not the logo.
Here’s an example. “Uber” is a highly distinctive name of transportation services (even though they consider themselves a tech company, they’re really a transportation service provider since the consumer uses they service to order and pay for the transportation). Their logo, on the other hand is super simple. It has no distinctive elements other than the word “uber”. Nobody can have exclusive rights just to a black rectangular. For most startups we would advise (at least in the beginning) to protect only the name. So, highly distinctive name with a relatively simple logo is a good cost saving choice.
If you have chosen a descriptive name, then the logo should be highly distinctive. As we mentioned earlier, it is either impossible or at least highly expensive to protect names that are descriptive. In that case, the best possibility is to have a highly distinctive logo that can be protected. An example of this approach is TripAdvisor. They have a descriptive name, but the logo is quite original on its own.
4. Do basic searches yourself to avoid clear no-gos
Before talking to a trademark attorney (or attempting registration on your own), make basic searches and investigations to make sure that you won’t propose a search for a name that is completely hopeless. Here’s what you should do at minimum.
Google searches. This is the most obvious place to start. If you see somebody in the same industry using the same or nearly the same brand name, move on.
Domain searches. It’s increasingly difficult to find good domain names nowadays, but should try to find domain names that match your brand name. If your brand name is not available as domain name, make sure that the domain name is not used in your industry.
Simple trademark searches. You don’t have to be a legal mastermind and you don’t have to rely on your own expertise when it comes to making trademark searches. By far the best way to do that is to check EU trademark office’s compilation database TmView. Put your brand name there and see if somebody has registered identical name in your product classes. Since this part involves some more steps, we have made a more detailed guide for making basic trademark searches. You can see it here.
With these steps you can reduce the likelihood that your brand name is a complete no-go. However, you should be cautious here. These searches will reveal the most obvious obstacles. It does not mean that there cannot be others. In fact, often trademark obstacles are not very easy to detect, which is why these searches do not replate a proper trademark search. In the legal industry these preliminary searches are often called “knock-off” searches. You can use these to “knock-off” name candidates, but not really confirm them. For that you should make proper trademark clearance searches with a trademark attorney.
5. Think broadly when drafting the list of goods and services
Especially for those companies that file their own trademark applications, by far the biggest mistake is that they draft the list of goods and service in their application in a very restricted way. Why is this a bad thing? For once, the brand will be protected too narrowly (the scope of exclusive rights is too narrow). This is bad from legal point of view, but it is bad also from cost point of view. Once a trademark application is filed, it is impossible to add new products and services to it.
Here’s an actual example from a trademark application made by the applicant himself. It’s a company manufacturing small and portable soda machines (carbonating machines). Their trademark covers only “Apparatus for aerating beverages”. They certainly make “apparatus for aerating beverages”, but we would recommend much broader range. For example, a soda machine brand will inevitably (and usually very soon) expand to flavouring syrups, container, bottles, repair services, et cetera. Because it is not possible to expand trademark applications or registrations, it is much cheaper to think broadly at least 5 years ahead and protect the brand for the most obvious expansion. At the very least, if you make physical products, you should protect your brand also to retail services (you will probably also sell online on your website, right?) as well as repair and maintenance services. The only way to expand trademark protection to new goods and services is to make new applications. That is much more expensive that adding more goods and services to the first application.
6. Choose your attorney wisely
While you can save money by doing some things on your own, there are many issues where you will probably save a lot of money by using a trademark attorney. For example, a trademark attorney can tell when not to file a trademark (you will save government fees). A trademark attorney can also advise you if it is unlikely that your trademark will not be accepted. If you want to protect your brand internationally, there are many different ways of doing that. A trademark attorney can tell you what’s the best and most cost effective choice for you.
While it is wise to use an experienced attorney, you should be mindful that trademark registration process has many steps, and there are often many costs involved beyond just filing the application. Many trademark attorneys have cheap filing fees, but once the process starts there are many situations that trademark attorneys can charge a lot of money from unwitting clients. That obviously leaves a bad taste. When choosing an attorney, you should ask the following to be able to fully understand how much you will be charged for the service (again, don’t only look at the filing fee).
- Do you charge for drafting the specification of goods and services, or is it included in the filing fee?
- Do you charge for reporting an office action?
- How much do you charge for responding to office actions (if they just quote an hourly rate, ask how much a “typical” case is?). We have handled thousands of office actions, and we know that while each case is different, it’s still routine and repetitive work. An experienced attorney should be able to give an accurate estimation
- This is the final killer: do you charge for reviewing and posting the registration certificate. It is common that many law firms charge more for reviewing the registration certificate than they charge for filing the application. Why? Cheap filing fees are a good way of luring clients, and getting the registrations is a “happy moment”, so what’s a couple of hundreds of euros/dollars considering that you have just secured your trademark?
With these quick tips your should be able to make smarter choices.
