Top 4 Trade Mark Mistakes to Avoid or Risk Your Brand's Value

Your business likely has several trade marks, from your company’s name, slogan, and primary logo, through to ‘sub-brands’ used for individual products and/or services. A good trade mark can be the best marketing asset that your business can possess, commonly referred to as your ‘brand’ it is essentially your identity in the marketplace and can impact how potential customers view your company.

But what makes for a good trade mark, and should you talk to a trade mark attorney to ensure that one of your business’s most valuable assets is registered properly from the start? 

Hopefully, these four common mistakes will give you a quick insider’s view to creating and protecting trade marks. 

Too Descriptive

Trade marks that describe your goods and/or services are generally not eligible for registrability because they are wholly made up of words that others in your industry also need to use. For instance, AUSTRALIAN SCOOTERS is not protectable on its face because anyone selling, designing, renting, or repairing scooters in Australia should also be able to use those same words. 

When creating new trade marks make sure they are unique – short and punchy also helps. On this basis, a potential trade mark for our scooter business could be SCOOTIE, SCOOTLY or something entirely different like FLEA, which is descriptive of an insect but not scooters.  

With those three unique options, we’re now in brand territory, but it would be crazy to launch the new scooter business without first ensuring a trade mark attorney searches the Australian Trade Mark Register (and other countries if applicable) to check the availability of your preferred name. 

If the search results are clear, or your attorney has a strategy for potential barriers, trade mark applications should be filed immediately. 

Self-filing Your Trade Marks 

Although DIY-ing your trade mark application looks cost-effective and easy, a significant portion of ‘self-filed’ trade mark applications fail for several reasons, including: 

• The trade mark wasn’t protectable in the first place

• The same or a similar trade mark is already owned by someone else for the same or similar goods and/or services

• It was filed with incomplete or incorrect ownership details

• It is somehow ‘contrary to law’, which can cover a wide range of issues

• It was incorrectly categorised, and more…

Whilst it might look cheap and cheerful to file your own trade marks, it can end up being a waste of time and money. Instead, a trade marks attorney could have filed strategically, or advise not to file at all, from the outset.

Like the old saying of “measure twice cut once” it pays to do your research or have a trade mark attorney do the leg work for you. 

Poorly Protected or Outdated Protection 

It’s not uncommon with self-filed trade mark applications for the ‘scope of monopoly’ to be insufficient because most self-filers are not familiar with how to prepare a claim that provides comprehensive protection and thus increases your trade mark’s value in the short and long term. 

Also, as your offering changes and evolves over time, especially more recently thanks to the COVID ‘pivot’ into entirely new areas, the scope of monopoly can become outdated. 

It’s worth asking your trade mark attorney to check if your existing trade mark registration is sufficient to cover your business’s new goods and/or services.

Ownership in the Wrong Entity

It is essential that your trade marks are filed in the correct ownership name, which is often not your own personal name if you are a director of the company that uses these trade marks day-to-day. (However, this could be the right choice if you’re a sole trader using your trade marks day-to-day.) 

More likely, the correct trade mark owner is the operational entity, or potentially a parent company if the marks are used by a subsidiary, or a trustee for a trust. 

Seek your accountant’s guidance and ensure your trade mark attorney is aware of any ownership structures created with intellectual property in mind, including trade marks.

The team at KOMO® IP Attorneys are experts in securing powerful and strategic trade mark registration and will make the process as easy as possible for your business. To speak to an expert trade mark attorney click here