How to trademark a name

If you’re investing time, money, and effort in your start-up business, it makes sense to protect your brand.

Many small businesses trade mark their brand name, logo design, and other brand materials when they start up.

Registering a business or product name as a trade mark could offer many benefits, but it could be costly and time-consuming.

In this article we’ll go into what a trade mark is and how to obtain one but it’s worth seeking independent specialist advice before making an application.

What is a trade mark?

A trade mark itself is straightforward.

A trade mark is any design, sign, or text that can be shown graphically and used to clearly identify a business, product, or service.

It covers brand and product logos, specific words and slogans, and even images – anything that would allow an average person to identify a business or product from sight.

Trade marks can be words and names, such as ‘Nike’ or ‘Tesco’, slogans like Nike’s ‘Just Do It’, or images like the Nike Swoosh logo.

When you trade mark a name, you can protect it from being used by other businesses and reserve it exclusively for your use.

Learn more – read: What is a trade mark?

Why register a trade mark?

Registering a trade mark will help you protect your brand, such as the name of your product or service.

If another business or person uses your trade mark without your permission, you could stop them through legal means and claim compensation.

This may make your brand more valuable, which could help when seeking investment for your start-up.

Here are a few other potential advantages:

prevent fakes and counterfeiters – if anyone copies your brand or passes off your designs/name as their own, you could take legal action against them
makes your brand an asset – you can treat your brand as an asset, including selling it to others
show your brand is protected – you can use the ® or ™ symbols alongside your logo and any trade marked words.

What you can and can’t register as a trade mark

There are lots of rules detailing what is and isn’t acceptable to register as a trade mark.

In general, you can register logos, specific applications, and the use of colour, sounds, and words in any combination.

For example, you can trade mark a logo in different colours along with words such as a brand slogan or phrase.

It must be distinctive and unique to be registered – many trade mark applications fall at this hurdle.

To avoid a failed application, check the following rules that apply when registering a trade mark:

misleading words or images – a trade mark can’t be misleading, such as claiming something is British when it’s made overseas
generic or common terms – bland, generic terms such as ‘we serve customers’ will fail, as trade marks must be distinctive
offensive terms – trade marks that contain offensive words or images that are likely to offend will fail
obvious terms and images – avoid using terms or images in your trade mark that describe the business. For example, the word ‘plaster’ could not be used solely to describe a plastering business. You also can’t use 3D shapes connected with the trade mark, such as a 3D car for a car manufacturing business
flags of the world – a trade mark can’t use images or symbols that are similar or the same as existing state flags, nor other existing symbols such as hallmarks.

The UK Intellectual Property Office (UK IPO) has published a helpful trade marks manual that outlines what can and cannot be registered as a trade mark.

It’s worth noting that trade marks do not always have to be registered, and that unregistered trade marks can still be protected, for example by making a claim for passing off in the case of infringement but that these claims tend not to be straightforward.

Check if your trade mark is already registered

It’s worth researching before you apply to register a trade mark, as failed applications could be costly and mean going back to the drawing board.

You can start by searching the trade mark database to see if anyone has already registered an identical or similar trade mark for the same or similar goods or services. The IPO has a free search engine for both UK and European Union trade marks (EUTM).

Since Brexit, EUTMs no longer cover the UK, but the UK IPO database includes comparable UK rights created from EUTMs registered before 1 January 2021.

Your search needs to be thorough because when you submit your application, it will be forensically scrutinised against existing trade marks.

You must search for identical marks and check for phonetic, visual, and conceptual similarity to rule out any possible customer confusion between businesses.

What if my trade mark is already registered?

There are no shortcuts to ensuring that your trade mark is unique, but it matters whether you’re already using it.

If you apply to register a trade mark you’re already using – such as a company logo – and it’s too similar to someone else’s trade mark, the owner of that trade mark will be told about your application.

They could then take legal action, possibly forcing you to stop using it and potentially causing operational issues.

For this reason, you might consider first contacting the existing trade mark holder.

You could try to buy their trade mark or ask their permission to register yours – if they agree, they can give you a letter of consent to include with your application.

If you’re not yet using your chosen trade mark and are willing to choose a different one, then there’s no need for a definitive search before applying.

The IPO will conduct a search during the application process and provide guidance on how close it is to an existing trade mark.

Watch this: Registering a trade mark is a valuable tool for protecting your business brand.

This video by BusinessZone highlights the key challenges and offers guidance to help get you started:

How to apply to register a trade mark

Applying to register a trade mark is straightforward, and you’ll need three key pieces of information for the application.

Your details

You can file a trade mark application as an individual or in the name of your limited company by acting on its behalf.

You can change the details connected to the application once you’ve submitted it.

The mark

This needs to be a detailed submission of the mark, including details of words, colours, and designs.

A useful tip is to write the words you’re applying to register in uppercase, as the trade mark is then applied to all styles of those words, including lowercase.

You cannot change the mark once you’ve submitted your application.

The class

Trade marks are registered to one of 45 different classes of business – you can apply for as many as are applicable to your business.

For example, class 37 relates to building construction, installation and repair services, whereas class 33 relates to alcoholic beverages (not beers).

This means you wouldn’t register a new building company brand trade mark in both classes, just class 37.

The IPO guide to classifying trade marks is worth a read.

You can start the process on the government’s trade mark application web site, but if you want to apply by post, you’ll need to download the trade mark application forms but be aware that this may cost more.

How much does it cost to trade mark a name?

There are two processes you could follow when applying to register a trade mark, and the cost can vary depending on which process you decide to use.

RightStart application

This is an option for those looking to register a trade mark with initial flexibility, and costs £100 for the first class and £25 for each additional class you wish to register.

A few weeks after submitting your application, you’ll receive an examination report indicating whether it meets the criteria and highlighting any trade mark issues.

If you choose to continue, you must pay an additional £100 plus £25 for each extra class.

This approach is particularly beneficial for new businesses, as it means you could halt the process after reviewing the report without incurring the additional £100 fee if significant issues are identified.

Standard application

This option is more cost-effective, requiring a one-time payment of £170 and £50 for each additional class.

This upfront payment saves you £30 compared to the RightStart application.

However, unlike RightStart, the entire fee is paid upfront, and there is no opportunity to pause based on the examination report feedback.

After you apply to register a trade mark

Within two weeks of your application, you will get an examination report.

This will either approve your application or list any existing trade marks that your registration might infringe.

It will also tell you if there are any other reasons your mark can’t be registered.

You can continue with your application even if conflicts exist – if you do, the trade mark office will notify the owners of similar trade marks, who may choose to oppose your application.

After receiving the report, you have two months to fix any problems and continue with your application.

If your report shows no problems, your application will be published in the Trade Marks Journal for two months, allowing anyone to oppose it.

If someone opposes the registration, you can stop the registration process, try to reach an agreement with them, or defend the trade mark.

It’s a good idea to seek independent specialist advice if you find yourself in this situation. A registered trade mark attorney could help – they are regulated by the Intellectual Property Regulation Board (IPReg).

If no one objects – or if you resolve any objections – your trade mark will be registered and you’ll receive a certificate confirming your trade mark.

Maintaining your trade mark

Trade marks in the UK don’t last forever.

They’re valid for ten years, and you need to take steps to keep them active.

During these ten years, you can sell your trade mark or use it as a business asset.

You should also watch for anyone copying or misusing your trademark.

Taking care of your trade mark is essential for protecting your brand as your small business grows.

You should regularly check for similar marks that might confuse customers or weaken your brand.

You must actually use your trade mark in your business – if you don’t use it for five years, you could lose your rights to it.

Keep good records showing how and when you use your trade mark, as these might be needed if you ever have to prove you’re actively using it.

Remember to tell the Intellectual Property Office if your contact details, such as your address or email, change.

By diligently monitoring, using, and renewing your trade mark, you protect your brand’s identity and value as your business grows.

Don’t forget – you must renew your trade mark every ten years.

Common mistakes to avoid when applying for a trade mark

Applying for a trade mark could be a crucial step in protecting your brand identity, but it’s easy to make mistakes that could cause costly delays or rejections.

Understanding these pitfalls could help you avoid them and make the application process smooth and successful.

Here are some common mistakes small business owners often make, and how to avoid them:

1. Not conducting a thorough trade mark search

One of the most common mistakes is failing to perform a comprehensive search to ensure the name or logo isn’t already in use.

This could lead to infringement issues or application rejection.

Tip: It could be worth considering hiring a professional to conduct a detailed trade mark search, ensuring your chosen mark is truly unique.

2. Choosing a descriptive name

Selecting a name that describes the goods or services may lead to rejection as it lacks distinctiveness, making it harder to trade mark.

Tip: You may want to choose a more inventive name that sets your brand apart and is easier to protect.

3. Incorrect classification of goods/services

Misclassifying the goods or services associated with your trade mark could result in unnecessary complications or rejection.

Tip: It could be helpful to review the trade mark classification system or seek expert guidance to check that your application aligns well with your business offerings.

4. Overlooking the importance of documentation

Failing to gather and maintain the necessary documentation to support your trade mark application might lead to delays.

Tip: Consider keeping detailed records of your trade mark use and related business activities to support your application if needed.

5. Assumptions about international protection

Assuming that a trade mark registered in one country automatically protects it globally can be a common misconception.

Tip: If you plan to expand your business beyond the UK, it might be wise to explore international trade mark protections.

International trade marks – what you need to know

If you’re a small business owner looking to expand internationally, securing your trade mark abroad is important.

The Madrid System allows you to register your trade mark in over 120 countries with a single application, saving you time and money.

However, some countries may require direct registration due to specific legal nuances and unique trade mark laws.

It could be a good idea to talk to a trade mark lawyer who knows the rules in each country where you want to do business.

They can help you avoid problems and make sure your trade mark is properly protected.

Once registered, you need to monitor how your trade mark is being used so you can catch and stop anyone from using your brand name or logo without permission.

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