How to Register a Trademark for Your Name or Logo
Note to reader: Apologies if you’re offended by puns, visual or otherwise. This article was updated on 24 November 2016.
Registering a trademark involves a number of steps from choosing the mark, searching, filing your application and seeing it through to registration. This article sets out what’s involved in these steps and what we at Epiphany Law can do to help you.
Create a valid trademark
This involves: Brainstorming! Choose a small number of names or concepts that help to create the personality that you want your brand to embody and which are also unique and distinctive (which means they should not be too descriptive). If necessary, create a logo concept with enough ‘get up’ to assist in its registration.
We can help by: A free 10 minute consultation with a trademark lawyer to give you some initial feedback regarding the ‘trademarkability’ of your preferred concepts.
Search, evaluate and choose
This involves: Conducting thorough trademark searches. The searches should cover both the market place and the trademarks register to ensure that you have the right to use the trademark and the ability to register it. Try not to get emotionally attached to one name or logo until after these searches have been completed, because you don’t want to commit to a trademark that you might be forced to change at a later date.
We can help by: Conducting trademark searches on your behalf.
Prepare and file your trademark application(s)
This involves: Submitting a high quality trademark application that will ensure you have clear, enforceable rights in relation to the trademark(s) you have chosen. The application must have a suitably-crafted description, be in the correct classes, and must try to anticipate any objections that are likely to be raised by the examiner.
We can help by: Preparing and filing your application, as part of our customised trademark registration services.
‘Prosecute’ your application(s)
This involves: Answering any ‘reports’ issued by your examiner by correcting any formal errors, and by overcoming objections, providing ‘evidence of use’ (where relevant), or amending your application to address concerns where appropriate.
We can help by: Making formal legal submissions on your behalf, amending your application, preparing and filing evidence of use on your behalf, or assisting you indirectly with our DIY Evidence of Use Kit.
Ensure your trademark is properly registered
This involves: Under processes adopted from 10 October 2016 onwards, this normally occurs automatically once the two month opposition period has come to an end without any Notices of Intention to Oppose being filed.
We can help by: Ensuring all is in order, deadlines are being met and that your trademark is entered into the register at the earliest opportunity. This is a standard part of our service.
Protect and monitor your trademark
This involves: Carefully controlling how your trademark is used both by your business and by others. It must be used consistently, and people must be made aware of your rights. It must only be used by others under appropriate licenses, and you must exercise control over how it is used. You must make sure that others are not using similar marks by monitoring the market place and trademarks accepted for registration by IP Australia.
We can help by: Monitoring trademarks on your behalf, assisting you to negotiate with people who infringe your registered rights, and taking infringers to court.