“I Should’ve Probably Trademarked That”

“I Should’ve Probably Trademarked That”

Following Specsavers’ high-profile bid to trademark ‘should’ve’, many companies may be asking themselves whether they should attempt to trademark a word or phrase of their own. But how should they go about this?

High-street optician Specsavers has caused a stir by applying to trademark the word ‘should’ve’ from its slogan ‘Should’ve gone to Specsavers’.

It’s an extremely rare practice for a brand to register a specific word that’s not the company name; the other notable example is Carlsberg’s ‘probably’, which was trademarked in the 1990s. Indeed, the beer manufacturer’s one-word slogan has apparently enabled it to avoid certain alcohol advertising restrictions – like during the recent UEFA Euro 2016 football tournament, when it used its one-word trademark on perimeter boards rather than the company name.

But how exactly have these companies been able to trademark such arbitrary words? And, for that matter, how can a company like Apple get its name trademarked when it’s such a common everyday item?

Apple’s (lack of) apples

The answer to this is actually incredibly simple. Since Apple the company does not sell apple the fruit, it is not deemed unacceptable by trademarking authorities. Apple’s trademark does not prohibit anyone from selling the fruit. For the same reason, Apple would not be allowed to trademark the fruit (if the company started selling it) because it would not allow others to advertise without infringing on copyright.

Xavier Morales is one of America’s top trademark attorneys. He expands on Apple’s case: “Trademarking is not about owning a word or phrase, but rather about providing companies with distinctiveness and preventing consumer confusion.

“If another company producing computers or computer programs called itself Apple Hardware or Apple Electronics, then Apple Inc could sue them for trademark infringement. But if Honda wanted to create a car called the Honda Apple, then Apple Inc would have a very hard time getting them to stop. There is little to no chance that consumers would confuse Honda’s car with Apple’s computer products.”

Of course, Apple is rumoured to be developing a car, so watch this space…

How to register a trademark

Kate O’Rourke, president of the Institute of Trade Mark Attorneys, gives the low-down on how a company should go about making its mark.

ContentLive: How does a company obtain a trademark? Does it need a lawyer or trademark specialist, and how much does the process cost?

O’Rourke: To gain trademark protection in the UK, you can file an application with the UK’s Intellectual Property Office or through the European Union Intellectual Property Office – which covers the whole of the EU including the UK with one registration. It is then possible to use these registrations to designate other countries via the World Intellectual Property Organization.

A trademark registration is a legal document, so seek the advice of a registered trademark attorney to guide you through the process and offer strategic advice.

“Trademarking is about providing companies with distinctiveness and preventing consumer confusion”
Xavier Morales, trademark attorney

Your attorney will not only conduct a full search of the trademark registers and advise whether your trademark is infringing an existing mark – vital to avoid your application being rejected – but can also provide advice about your brand and what you can protect. Should there be any opposition to your trademark, they will also be able to advise you what to do next.

The cost to register a trademark will depend on where you require protection and the types of products and services you wish to cover. The official fees [for first-class trademarks] start from £170 in the UK, and €850 in the EU. In addition, there will be your attorney’s fees to advise and prepare and file the application.

CL: When it comes to registering a specific word (like should’ve), what is needed to get a trademark? How unique and/or popular does it have to be?

O’Rourke: Slogans, names or phrases that are in common use are often not distinctive, or are descriptive of the relevant product or service and so cannot be registered. It is therefore unusual for a common term such as ‘should’ve’ to be registered as a trademark, but when a term or phrase becomes synonymous with a particular product or service through use, there is the possibility it can be registered. The slogan ‘have a break’ is a registered trademark, but only after long use resulted in the expression becoming distinctive of the KitKat chocolate bar.

CL: How long does the process take?

O’Rourke: The process of registering a trademark in the UK usually takes around four months to complete, assuming there are no objections and no oppositions.

Once you have decided on what you wish to register, have conducted searches on your mark, and have filed an application, there is a period of time where anyone can file an objection. If no objections are received, your mark becomes published and you will gain a monopoly right to use that mark.

CL: To what extent does the trademark apply in terms of length of time and geographical area?

O’Rourke: Registering a UK trademark will protect you just in the UK, whereas if you file a trademark with the European Union Intellectual Property Office, you will receive protection in all 28 current member states, including the UK. Both provide 10 years of protection and can be renewed indefinitely for a fee at the end of each 10-year period. However, registered marks can become vulnerable to cancellation if there is no use for a five-year period.

To protect your trademark outside the EU, you can apply for trademarks via the World Intellectual Property Organization – if you have an existing EU or UK trademark in place – or you can apply nationally in all countries of interest. We advise consulting a registered trademark attorney who can advise on where and how to protect your trademark in your key markets. The cost is dependent on which countries you need and the scope of protection you need.

By ContentLive

 

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Tuesday, 20 November 2018
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