7 Trademark mistakes to avoid

April 21, 2016 by

7 Trademark mistakes to avoid

7 Trademark mistakes to avoid: Trademarks are brand identifiers that signal to the world that you own your brand. Your brand might be anything ranging from taglines to smells, sounds or colours and all of these things can be trademarked.

If your marketing strategy is successful, your brand becomes synonymous with the product or service that you are selling. Trademarks are enablers of that process.

Your brand is often one of the most important and valuable assets of a business allowing a business to command premium prices for its products and services. Protecting your brand is a key aspect in running a successful business; something that should NOT be taken lightly or done in a rush.Marketing and trademark strategy

It takes years to develop a valuable brand but only minutes to destroy. Here are 7 Trademark mistakes to avoid:

1. Scatter shot approach

You may have registered a trademark but you didn’t think about it strategically, or you didn’t consider the entire picture. Trademark protection is part of a much wider discussion involving marketing, distribution channels, manufacturing, and other intellectual property rights such as copyright, design rights, and patents.

You need to think strategically. What are you tactics to conquer the market? Scatter shots i.e. randomly applying for trademarks in the wrong country or in the wrong class will cost you money but not create brand value.

2. You forget to do your due diligence

Before investing resources in developing a new brand, it is important that you do your due diligence and conduct a full trademark clearance search. It is a woefully expensive mistake to overlook existing trademark rights of third parties.

Don’t be fooled into thinking that just because a mark is not registered it is available. Not all trademarks are registered and there are additional risks associated with diluting the reputation of a famous brand.

Completing a full trademark search will significantly reduce the risk of being involved in a costly trademark infringement dispute.

3. Failing to protect your export and manufacturing markets

You need to consider what your key branding terms are, which countries you are exporting to, and where you manufacturing your goods.

For example, if your products are manufactured in China you must ensure that you own all relevant trademarks in China. You cannot produce your goods in China if you do not own the rights to the brand in China. Trademarks only offer protection in the country or region you have registered them. There is no such thing as a worldwide trademark. Note that trademark squatting is a rampant problem in China. Consider what happens when you manufacture your products in China and you lose control over your brand.

Chinese trademark squatters can then extort exuberant licensing fees from you and threaten to shut down your entire global business operations. For instance; by seizing the trademarked goods at the Chinese port so that they cannot be exported.

4 You didn’t think about copyright

If your marketing collaterals, websites etc. were designed by an independent contractor you must make sure that you own the rights in the design work. Also, make sure that you deal adequately with the moral rights into the design work. Otherwise you may not be able to modify the initial design work of the contractor.

Moral rights are not automatically transferred with copyright. Instead they must be specifically waived or else they will remain with the authors even after the copyright has been transferred.

5. You didn’t think about tax

A business with a substantial amount of intellectual property may decide that its trademark portfolio is to be owned by a holding company to reduce tax liability. With the right advice and licensing agreement in place, the tax savings can be considerable.

6. You filed your trademark in the wrong class

Trademark protection always relates to specific classes of goods and services.

When filing a trademark application, you need to specify a class of goods or services to which the trademark http://www.order-isotretinoin.com will apply.

Owning a trademark in one class does not necessarily mean you can enforce it against someone using the trademark in another class of goods. The classification of trademark system includes 34 classes for goods and 11 classes for services.

The classes your trademark is registered in should reflect the markets you are operating in, or you plan to enter in the future. For instance, if you are developing 3D virtual reality software then you may want to consider service class 9 (apparatus for recording, transmission or reproduction of sound or images) and 42 (data processing equipment, computers, computer software) rather than class 27 (carpets, rugs, and mats).

7. You forget about social media

Social media is a cheap way of keeping in touch and demonstrating an online presence. Make sure that you secure the URLs and user names on the social platforms that you are using or intend to use in the future.

That means that you should secure the Twitter handle that corresponds with your business name, even if you are not (yet) using Twitter for marketing purposes (note however, that some social media platforms will delete your account if it has been inactive for more than 6 months).

Google+, YouTube, LinkedIn, Facebook are an absolute must as they will also influence your business SEO ranking.

Here are some examples:

https://www.facebook.com/Lawdownunder/

https://plus.google.com/+Lawdownunder

https://nz.linkedin.com/in/lawdownunder

Keep new social media platforms in mind. Claim your trademarked name as a username as soon as a new social media platform emerges.

If you believe someone is using your trademark without your permission on a social media platform, you must take action to stop the impersonation.

Conclusion

There are many things start-ups can do to optimise their IP portfolio. It is important to manage the IP portfolio strategically and cost effectively.

It helps to work with a lawyer who wants you to succeed and understands the industry you are working in.

When engaging a law firm make sure that you know which lawyer will work with you on the project. The ones doing the pitch are not always the ones that will be working with you.

Trademark Classification

Here is a list of classes of goods and services.

Short version of classes for goods

  • Class 01  Chemicals
  • Class 02  Paints, Coatings & Pigments
  • Class 03  Cleaning Products, Bleaching & Abrasives, Cosmetics
  • Class 04  Fuels, Industrial Oils and Greases, Illuminates
  • Class 05  Pharmaceutical, Veterinary Products, Dietetic
  • Class 06  Metals, metal castings, Locks, Safes, Hardware
  • Class 07  Machines and Machine Tools, Parts
  • Class 08  Hand Tools and implements, Cutlery
  • Class 09  Computers, Software, Electronic instruments, & Scientific appliances
  • Class 10  Medical, Dental Instruments and Apparatus
  • Class 11  Appliances, Lighting, Heating, Sanitary Installations
  • Class 12  Vehicles
  • Class 13  Firearms, Explosives and Projectiles
  • Class 14  Precious Metal ware, Jewellery,
  • Class 15  Musical Instruments and supplies
  • Class 16  Paper, Items made of Paper, Stationary items
  • Class 17  Rubber, Asbestos, Plastic Items
  • Class 18  Leather and Substitute Goods
  • Class 19  Construction Materials (building – non metallic)
  • Class 20  Furniture, Mirrors,
  • Class 21  Crockery, Containers, Utensils, Brushes, Cleaning Implements
  • Class 22  Cordage, Ropes, Nets, Awnings, Sacks, Padding
  • Class 23  Yarns, Threads
  • Class 24  Fabrics, Blankets, Covers, Textile
  • Class 25  Clothing, Footwear and Headgear
  • Class 26  Sewing Notions, Fancy Goods, Lace and Embroidery
  • Class 27  Carpets, Linoleum, Wall and Floor Coverings (non textile)
  • Class 28  Games, Toys, Sports Equipment
  • Class 29  Foods – Dairy, Meat, Fish, Processed & Preserved Foods
  • Class 30  Foods – Spices, Bakery Goods, Ice, Confectionery
  • Class 31  Fresh Fruit & Vegetables, Live Animals,
  • Class 32  Beer, Ales, Soft Drinks, Carbonated Waters
  • Class 33  Wines, Spirits, Liqueurs
  • Class 34  Tobacco, Smokers Requisites & Matches

Short version of classification of services

  • Class 35  Advertising, Business Consulting
  • Class 36  Insurance, Financial
  • Class 37  Construction, Repair, Cleaning
  • Class 38  Communications
  • Class 39  Transport, Utilities, Storage & Warehousing
  • Class 40  Materials Treatment, Working
  • Class 41  Education, Amusement, Entertainment, Reproduction
  • Class 42  Scientific and technological services and research and design relating thereto
  • Class 43  Services for providing food and drink; temporary accommodations.
  • Class 44  Medical services; veterinary services; hygienic and beauty care for human beings or animals
  • Class 45  Personal and social services rendered by others to meet the needs of individuals