Our previous post dealt with why it is beneficial to use a trademark attorney. Nonetheless, many startups and SMEs file their own trademark applications. If you know what you are doing, then great. The problem is that many people think they know what they are doing, or that if they don’t know enough about trademarks, they rely on YouTube tutorials made by other non-lawyers.
Below is some advice from a DIY “expert”, taken from a YouTube video. Sometimes bad advice can be pretty harmless (if a navigator directs you to the wrong city). Sometimes it can be fatal (if a navigator directs you down the cliff). This advice, taken from a YouTube video (which we do not disclose), is of the latter kind. It contains so much bad information that if you rely on it, you might end up in all sorts of legal problems.
As is often the case, the video is reasonably well made and convincing, so it’s no surprise that those who are not familiar with trademark laws find it authoritative. Here are some user reviews:
- “This one is a gem”
- “It really put me at ease with my application”
- “Good stuff”
- “Very informative”
- “I am just about to apply for a trademark and this is exactly what I was looking for”
With those, here’s the advice given in the video.
Since trademarks are valid for only ten years, you can ignore all prior trademarks that have been filed more than ten years ago
After saying this, the presenter makes a search that only includes trademarks applied for in the previous ten years, explaining that others do not matter.
While trademark registrations are valid for ten years at a time, they can be renewed indefinitely. In fact, older trademarks often get enhanced protection because they have become more distinctive through use. So if anything, the older the prior mark, the bigger the problem it might pose.
Here’s the truth: trademarks can be valid forever. All valid prior registrations matter, no matter when they were filed.
Only those prior trademarks that are registered in the same class are relevant
Wrong again. Trademark classification serves only administrative purposes. It has no legal significance. It is common that two products in one class are dissimilar and two products in different classes are similar. Here are two examples:
- Software and sunglasses in class 9 are dissimilar
- Beer (class 32) and cider (class 33) are similar
When you do a trademark search, it is important to have a good grasp of classification. It is rarely the case that a search could or should be limited to one class only. Almost always there are similar products in other classes that must be taken into account.
Here’s the truth: Trademark classes are largely irrelevant. They can give some guidance, but what matters is what the goods and services are under comparison. Their class number does not determine their similarity or dissimilarity.
If your trademark is one word, anything with two or more words is sufficiently different
Again, very dangerous and incorrect advice. Also, this does not even make any sense. If this was the case, anyone could start a clothing brand called “Nike + any word”. Generally speaking, if a prior trademark is included in the later mark, they are most likely to be considered similar.
Here’s the truth: the similarity between two trademarks is an overall assessment of visual, phonetic and conceptual similarity. There are many good rules of thumb, but the above rule (If your trademark is one word, anything with two or more words is sufficiently different) is completely false. A better alternative would be that if one trademark is included in its entirety in another trademark, they are probably similar. As always, there are exceptions.
Reversing the order of the words makes trademarks dissimilar (trademark ≠ marktrade)
It is a well-established principle that merely reversing the order of two words does not make two marks sufficiently similar. Two such trademarks still contain identical elements, although in a different order. Their similarity in most cases is considered high. If you’re planning to establish a credit card company, don’t call it CardMaster and expect to be safe.
Here’s the truth: reversing the order of two words does not remove similarity. Similarity remains high in most cases.
If there is an identical prior word mark registered, make a logo
The presenter found an identical prior wordmark and reasoned that making a logo will make it sufficiently different. He makes a simple logo in the video, writing the word with a fairly common font and adding a simple figurative element, clip art type. The figurative element is a simple graphical representation of one of the words in the mark (feather).
Word trademarks protect the word itself without any regard to its font, shape, size, colour, etc. Adding a graphical element does not typically remove the similarity. After all, the marks are still identical phonetically and conceptually. Visually, they still contain the same word.
Here’s the truth: taking a registered word mark and making a figurative form (logo) out of it is a horrible idea. In most cases, it does not remove similarity.
Disclaimers
When making a trademark application online, there is a section called “disclaimer”. He explains that it means that if a lawyer makes the application on your behalf, he can tick it to state that he’s not assuming any liability for the mark.
This is probably one of the few mistakes that were not extremely harmful. Disclaimers are usually about excluding liability, but not with trademarks. With trademarks, disclaimers are used to exclude certain parts of the trademark from the scope of protection. So for example, if you have a coconut drink called SWIGGEDY COCO, you can enter a disclaimer for the word “COCO”. That means that no exclusive rights are claimed for the word “COCO”, other than in combination with the word “SWIGGEDY”.
In many countries, disclaimers do not need to be expressly stated. If a trademark contains a generic or descriptive element, the exclusive rights conferred by the registration does not cover the generic or descriptive element as such, but only as part of the trademark as a whole.
Here’s the truth: trademark disclaimers are about excluding parts of the trademark from legal protection, not about excluding liability for the mark.
Conclusion
As I mentioned in the previous post, it is not difficult to fill in all the required fields in the trademark application form. Just because you get every field filled and every box ticked, it doesn’t mean that you’ve done it right. What matters is what you write in the boxes. For that, a qualified lawyer is always your best help. Beware of self-taught quacks who think that just by managing to fill every required field they have become experts.
