How to Register a Trademark (Trade Mark) in the US and the UK / EU ( Part 1)

Part 1: Overview and Pre-Filing Considerations

The process of registering a trademark (or “trade mark” depending on your country) is a method of protecting a name. With a registered trademark, essentially the government you register it with confirms that it has checked and the name sought is appropriate for protection.

Overview of the process. Essentially, all governments (USA, UK and EU) will check to see if no one else is using the same name, or a similar name that could be confusing, and that it does not violate any laws such as taking names reserved for the government. If a trademark applicant passes this first test, then the government publishes the proposed trademark to the public. The purpose of publication is to give third parties an opportunity to oppose the proposed trademark (more on that below). If the proposed trademark passes publication without opposition, or defeats the opposition, then the name will be officially registered in the country it was applied for in.

First Step: Is your name unique? The first step in any trade mark process starts before filing the application for the trade mark. It consists of making sure no one else is using your name. There are amateur ways of doing this, such as a search on something like Google. However, professional searches typically are not very expensive (less than US$500) and are far more thorough. At the end of a professional search, any name out there that is similar to yours will be provided to you in a list.

Second Step: What Class(es) is the Trademark In? This is really part of the first step, as it matters for analysis of the search, but it is unique enough to set apart. Trademarks are split into 45 different industries, called “classes” or “classifications”. These classes were established at a convention in Nice, France, and are therefore formally referred to as Nice Classifications. There are also classes established by different countries but they are less important, so when this essay refers to “classes” it is Nice Classifications.

As noted above, the classes are divided by industry. For example, clothing is in Class 25 and laptops are in Class 09. Big, well known trademarks like “Coca Cola” enjoy protection in all 45 classes because the trademark is so well known. However, for almost everybody else, the trademark you apply for will only protect you in the class(es) that you register it in. So, for example, if you sold delicious cakes and sold t-shirts promoting those cakes under the same trademark, you would want to register your trademarks in both the class for cakes and for t-shirts.

Once the class(es) have been identified, then the search becomes much more precise and reliable. The search could reveal a competing trademark, but if it is in a different class, then it very well may not cause any confusion because it is in a different industry, and no one would be confused. That is not to say there could be some “cross-class” confusion – there can be. For example, motors are in one class, but garages that fix those motors are in a different class. If both the motors and the garage have the same name, that could cause confusion. However, identifying the classes and delineating them when analyzing the search results is a reliable way to see if your trademark is unique and can be registered.

Third Step: Can the name pass the technical requirements? The motors and garages is a good transition to this issue. For example, a trademark is not available if the name is simply descriptive of the goods or service. Using the motor-garage example, if the garage just worked on BMW’s, it could not get a trademark for “BMW Garage”.

There are four levels of names – Fanciful, Arbitrary, Suggestive, Descriptive and Generic. Trademarks are not available for descriptive or generic marks. An example of a generic mark is naming a clock – “clock.”

This is an example of technical requirements a trademark application must pass, but there are others. As noted above, there are some names reserved for the government, such as getting a trademark for a geographic region.

Fourth Step: Translation. This is important in a country or region that speaks more than one language. This is true in regions of the US near Mexico where Spanish is predominant, and it is especially true in the EU where the trademark intends to cover all 28 of the countries in the EU. A good example is for a mark called “PortoVino”. This is a brilliant mark for a bag that carries wine. It evokes the famous town of Portofino, the word “porter” as a footman for your wine, and the Spanish word for door to take you through to a new place. However, in Spanish, Italian and Portuguese, “porto” is the first person conjugation of “portar” which means “to carry”. So PortoVino is descriptive of what it is (a wine carrier) and cannot be given a trademark in these countries because it does not pass the technical test for descriptiveness. Figuring this out required knowing how to conjugate portar in these languages. Not easy!

Another good example of translation was when the Chevy Nova was introduced to Mexico. The Nova was a popular car in the US, but “no va” in Spanish means “no go”. So it could pass the technical tests, but no one would want to buy a car called that.

So, in sum, if someone else has your name, or something very similar to it, you may want to seek professional legal advice, or think of a new name. If your name is not taken, and won’t cause confusion with another trademark, then great, but take into consideration the technical restrictions and potential translation issues. If after that it looks good, then congratulations! It’s time to prepare your application.

Clearly this is a lot more than most people think about when wanting to register a trademark. To legal professionals, this is just the tip of the iceberg. However, it is a good place to start.

In the next edition, we’ll take it from this point and explore the mechanics of the application process.

Should you have any questions regarding "How to Register a Trademark" be sure to contact our specialist Trademark Lawyers on (UK) +44(0)203 287 9500, (USA) +1(949)431-5438 or make an online enquiry here and we will contact you.