About trademarks

Disclaimer: While all the information in this Help section has been prepared by qualified attorneys, it does not constitute, and must not be understood to constitute, legal advice. You should always seek an attorney opinion.

What is a trademark?

A trademark is a sign which distinguishes your goods and services from those of other businesses. Your trademark could also be described as your ‘brand’ and can be made up of words, logos or a combination of both.

What are trademark classes?

Trademarks must be registered in one or more of 45 ‘classes’: 34 classes for goods and 11 for services. Classes group products that are deemed to be similar areas of trade and are identified by their numbers. Classes can be non-intuitive and complicated to work out – for example, photography is mentioned in five different classes, but the services of a professional or studio photographer are only in class 42 and easily missed - which is why it’s best to submit your trademark application through a professional service.

The fees that you pay for your application reflect the number of classes under which you need your trademark to be registered. Once you place your order online the US qualified attorneys at the law firm of WJ will make sure that your trade mark application is submitted under all the relevant classes, so ensuring that your brand will befully protected once your registration is complete.

Do I need a trademark?

If you run a business without a registered trademark, your competitors could:

  • Register your trademark, forcing you to rebrand;
  • Conduct business using your trademark or a very similar trademark, deriving benefit from and/or damaging your reputation.

Without a registered trademark, your brand is completely insecure. A registered trademark:

  • Belongs to you, so you can sell it, or let other people have a licence that allows them to use it;
  • Will help to put people off using your trademark without your permission;
  • Lets you take action against anyone using your trademark without permission;
  • Allows the authorities to bring criminal charges against counterfeiters.

Am I covered because I own my domain name?

No, owning a domain name does not offer your trademark any protection under the law. If you want to protect your brand, you must register your trademark.

Am I covered because my business is registered?

No, registering your business does not offer your trademark any protection under the law. If you want to protect your brand, you must register your trademark.

What is allowed as a registered trademark?

To be registrable, trademarks must be distinctive for the goods and services you provide. A registered trademark must allow consumers to differentiate your goods or service from another company’s.

For this reason, made up words are generally acceptable as trademarks. Real examples are:

  • Nike 
  • Xerox 
  • Kleenex 
  • Viagra

Examiners will also accept word marks involving familiar words, if none similar have already been registered, and they are distinctive for the Goods and Services being offered

  • Apple 
  • Amazon 
  • Pampers 
  • Target 

 

What is not allowed as a registered trademark?

Trade mark applications will be refused if the trade mark describes your goods or services or any characteristics of them:

  • The pizza co 
  • Discount handbags
  • SUV Mart  
  • Cheaper Flooring

Examiners will also refuse to register trade marks which are made up of descriptions customary in your line of business, or make a claim about the quality of the business or service:

  • Tastes Great Chocolate
  • Built To Last Beds
  • Quick auto rental 

Family names are also usually rejected by the US examiners so 

  • Houdini 
  • Johnson 
  • Garcia 

Your trade mark application will also be turned down if it includes offensive words or images; is against the law in any way e.g. promoting illegal activities; or is deceptive – attempting to persuade the public that your goods and services have a quality which they do not.

Examples of acceptable and unacceptable trade marks

Trade mark Goods / services ? Comments
24/7 any denied Common description: many say they operate 24/7
Shoes Direct mail order shoes denied ‘Direct’ is widely used - specifying shoes does not help
Wonderstuff oil lubricant denied Joining words together does not make a mark acceptable
Klever Klene cleaning denied If a word or phrase spelt correctly would not pass, misspelling does not help
Quickshop.com internet denied Presenting as a domain name (.com, .co.uk) does not help
Monkey Nuts clothing aproved Acceptable for clothing as not common usage. Would not pass for food, animals, etc.
Pink Box computers aproved Is now distinctive
Zooby 24/7 any aproved Is now distinctive
TradeMarkCafe trade mark services aproved Is now distinctive
Slippery Sid’s Wonderstuff oil lubricant aproved Is now distinctive
Kevin’s Klever Klene cleaning aproved Is now distinctive
Quacks.com internet aproved Is now distinctive

 

Can an existing word be registered as a trademark?

Yes, providing the existing word:

  • Distinguishes your business from others;
  • Does not describe your goods or services;
  • Is not already registered to or bear similarity to a registered trademark of another business working in your line of trade;
  • Isn’t offensive;
  • Does not promote illegal activites;
  • Does not attempt to mislead the public.

What are aural, visual and conceptual similarities?

Trademark applications will be refused if your trademark bears:

  1. An audible similarity to an existing registered trade mark, e.g. Amuhzone Books;
  2. For logo trademarks, a visual similarity to an existing registered trade mark, for example – a copy of the Heinz Beans registered trademark with the name of your own brand of beans in the same font;
  3. Conceptual similarity, e.g. Eliza Hairbrushes and Elise Haircare.

Can two businesses own the same trademark?

Two businesses can register the same trademark provided their areas of trade do not overlap, e.g. Badabing Real Estate and Badabing Pool Care.

Can I use another company’s registered trademark?

If your line of business is the same or similar as the company’s whose registered trade mark you want to use, then by using their trademark you could be subject to legal action or even criminal charges. Even if you think that your business operates in a different sphere, because some trademarks are registered under many different ‘classes’, i.e. industries, by law your activities could still be infringing on their registered trademark. The only way to be certain that your use of a trademark does not contravene trade mark law is to consult an attorney. 

Find out if your mark is available to register