The Big Question: Should You Register Your Trademark Yourself?

Many people mistakenly believe that applying to register a trademark is an administrative process like registering a company or applying for a permit, and so choose to do it themselves instead of engaging a trademark professional. In this article we discuss why you shouldn’t underestimate the complexity of this task.

Trademark applications are deceptively complex

Many people mistakenly believe that applying to register a trademark is an administrative process like registering a company or applying for a permit.

When applying for a trademark it’s necessary to make countless decisions which will affect not just whether your trademark will be registrable, but also the scope of the rights you’ll be granted (including whether you’ll be able to enforce them against competitors when you need to), and whether you could lose your trademark rights at some stage in the future.

Some important questions:

Here are some of the questions that must be considered by anyone filing a trademark application:

• Which person or company should apply to register the trademark? This might seem to be a simple question, but do you understand the implications of trademark ownership in terms of ensuring that your trademark cannot be challenged successfully after it is registered, ensuring that it is properly protected if your company runs into financial difficulty, and that you have understood the tax implications if your trademark suddenly grows in value?
• Which elements of your branding do you really need to register? Your name, or the name of your main product or service? The colour combinations you use? Have you considered registering distinctive elements of your packaging?
• If you choose to register your name, should you apply to register a graphical element that you use in combination with your name,? If you register a name that you also use as a domain name, should you include identifiers such as ‘.com’ or ‘.com.au’?
• If you consistently use a tag line with your trademark, should this tag line be shown in the application form, or should it be omitted?
• If you consistently show your name using a particular font, should your trademark application show your name in that font, or should it be in plain font using capital letters?
• Should your trademark application be in colour or in black and white?
• How comprehensive should your specification of the goods and services be? Highly specific? Highly general? Somewhere in between? What are the implications of each approach?
• If you are planning to expand in the future by using your trademark in relation to different goods or services, should you name those future goods and services in your application or not?
• Which class or classes do you need to register your trademark in? Is one enough?
• Do you know how likely it is that your trademark will be registered? If you are likely to encounter problems, what is your ‘fall back strategy’ and how does this need to be reflected in your trademark application?

The answers are never simple

While we try to give as much information as possible to our clients in the form of blog entries etc, there is never a simple ‘one size fits all’ answer.

The advice given by reputable trademark attorneys and lawyers is based on familiarity with voluminous statutes and regulations, the ability to find and apply case law, day to day experience dealing with the Trademarks Office, and the constant effort to keep up to date with changes and developments. All of these elements are taken into account and applied to the particular circumstances of each client. In our view, these are compelling reasons to use experts when applying for trademarks.