A trademark is one of the most important assets a business owns; there is far more to a trademark than just how it looks, important though that is. There is a great deal to consider before applying to the relevant body for registration. The press has reported that the Duke and Duchess of Sussex have received an irregularity notice from the United States Patent and Trademark Office stating "The wording 'providing a website featuring content relating to philanthropy, monetary giving, volunteer and career opportunities' in International Class 35 is also indefinite and over-broad and must be clarified to specify the nature of the content provided." Regrettably, they also overlooked signing the application.
Nick McEwen, an associate in Giambrone's corporate and commercial department, commented "It is not especially unusual to be rejected initially and for amendments to be called for. Ideally, there should be an adequate discussion with your legal advisors to ensure that every aspect of your application is in order." Nick further commented, "since your trademark almost certainly will be with you for the life of your business it is essential to think very carefully about every aspect surrounding your trademark to maximise its value to the business."
It is easy to think of a trademark as just a logo and to underestimate the potential of a trademark, the differences between a word mark and figurative marks, and the development and direction that their business may take over the years. Thought must be given to the potential expansion of your business into associate products or services. For example, your business may initially just focus only on ladies' evening dresses in particular, however, over time, you decide to diversify into accessories such as costume jewellery, evening bags, shoes, coats and long satin gloves to your range. Sometime later you may choose to add day-wear or gym and sportswear/activewear. A trademark with a company name called "Sassy Frocks" or "Evening Elegance" may not sit well with the expansion of your brand. Also, each expansion into another associated area will require the need to extend your trademark protection to ensure that there will be no attack on your brand which will bring additional costs to the firm. A company name with an all-encompassing trademark avoids this situation.
Another important decision is whether your own name should form part of your trademark. The well-known chef Paul Hollywood has been reported in the press as having trademarked his name with the UK intellectual property office and in Europe ahead of his planned expansion into kitchenware, restaurants and craft beers. He had a brush with an intellectual property dispute when he first visited the US and was sent a cease and desist letter regarding the use of the name Hollywood by the authorities (who may not have realised that it was Mr. Hollywood's real name) pointing out that Hollywood was incorporated as a municipality on November 14, 1903 and claimed prior right of use. The matter was dropped when Mr. Hollywood's lawyers replied pointing out that Mr. Hollywood's family had many more generations of use of the name.
The fashion industry has a tradition of using the designer's name as a trademark. However, Karen Millen signed away the right to use her own name and her subsequent bankruptcy saw her attempt to recover the use of her name in an attempt to revive her fortunes by trading under her own name in a hostile legal case which was ultimately unsuccessful.
Giambrone's experienced lawyers can help you plan ahead and provide the maximum protection at minimum cost. As well as most importantly ensuring that you are not infringing already existing rights of another business. Nick McEwen warns "a Google search is far from sufficient to establish that your chosen sign is available. All businesses are acutely aware that their name and trademark can be compromised by brand confusion, sometimes deliberately, brought about by a trademark that is too similar to their own". One or two of Nick's clients know full well how troublesome the lack of a thorough search has been for them in the long run.
By providing an in-depth consultation Giambrone's expert intellectual property lawyers can ensure that your trademark is unique and not similar to one owned already; that it will withstand the test of time, even if your business or public taste changes and that it will be strong and defendable over a long period of time. If and when the time comes that you want to sell your business a strong trademark will be a strong selling point.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
