Registering a trademark is one of the most effective ways you can protect your name, brand and work. Regarding intellectual property protection, there’s not much that can beat registering a trademark correctly, yet many people struggle with the process on the intellectual property office website in the UK and end up turning to a lawyer even for simple applications.
99% of trademark registrations you can do yourself and lawyers can be avoided, costing only minimal time, effort and you can gain a good bit of intellectual property knowledge in the process. The below is a quick step by step guide with screenshots to registering a trademark on the Intellectual Property Office website. (Remember, if you’re unsure about something and can’t find a satisfactory answer online, it’s best to consult a lawyer and get it right!)
Trademark Search (Name, Logo, Brand…)
First, you need to search to make sure nobody’s registered a trademark already with the same name or branding. Typically they won’t have, or it will be in a different class. We’ll focus on classes later, but in essence, there’re 45 classes and they breakdown into different industries/areas of business/science/technology. If a brand registers a trademark in let’s say area 42, you can still register the same name in 32; your company must be relevant in that particular field. For example, Sky is a registered trademark of the TV Company in the UK, but there’s also a window installation company called Sky in Wales who are trademarked in a different class.
Now, if your name is taken in your relevant class, unfortunately, you’re probably not going to be able to use it, so it’s time to come up with a few other names/variations. Also remember that generic words considered general language would likely be rejected i.e. Water, yet Water Eco Services would be OK.
Registering a Trademark application online
Start the application process on the IPO/GOV site here. Click the green start now button.
You will be asked if it’s you registering the trademark on behalf of yourself or a company and if you are an authorised person to do this. If you’re not a lawyer leave the current option selected and click next in the bottom right-hand corner.
On the next page you can either click to enter your details or if you’ve filed a trademark before, retrieve your previous details using your e-mail address. (If you’re filling this in for the first time, make sure to use an address post where they can reach you at for communications/trademark certificates! Not a generic PO box unless you have it forwarded.) Once you’ve filled in or retrieved your details click next.
Now you’re asked if your trademark has words, letters or numbers, i.e. Golf Retreat 12 or Golf Retreat Chichester would work. The majority will have words, letters or numbers if it’s a normal trademark application so make doubly sure you do and select NO/YES based on that. (Typically when trademarking background music or something else odd comes up you would click no, but in most cases, it’s yes.) If you select yes, it will ask you to fill in your brand name, make sure this is correct! Now click next.
Next, you’ll be asked to further define the wider category of your trademark.
Statement A. It has words, letters or numbers. (If your trademark is just a particular name/ phrase with no styling/graphics you wish to protect, then this is what you need to click.)
Statement B. It has words, letters or numbers in a particular style, colour or with a picture. (This is the most used option, typically if you want to protect your name, phrase and design, then this is the option you will need to select.)
Statement C. It’s an unusual type of trademark e.g. sound (musical score) (We never had to use this option but it’s pretty self-explanatory, it’s not the usual one for most trademarks.)
If you selected option B which the majority will, you will be asked to upload the logo/graphic you wish to trademark, do so and click next.
Here you’re asked if you’re registering a single trademark or a series. A single trademark is for just one design/phrase/word; this generally gives you a good amount of protection if someone tries to copy it even with slight changes. If you do want to go a step further, you can trademark a series of variations i.e. mobile logos. It will cost you an extra £50 per added variation, and it’s typically unnecessary but worth it if you want to be near legally bulletproof if done correctly.
Class, as mentioned above, is the industry grouping your mark will come under i.e. if you’re in software or agriculture there’s a different area, and terms within classes get very specific as to what you do. (You can select multiple classes if applicable i.e. if you’re selling software for farmers, you might want to get classes in agriculture and software/technology.)
To find and select your class/classes you have two options. You can either search using a keyword or select a class and view its terms. This is typically the stage people get overwhelmed at, but it’s actually pretty straightforward.
First off, you can use search, but it’s a very inaccurate exact match search engine with no suggestions. The easiest way we’ve found to do it is to look through the classes, find your relevant area and find the most relevant term. (Take some time and take a good look, class is important to get right if you ever need to defend a trademark.)
You can also select a class, then write a description term of your own but it’s not advised unless you have serious trademark/ legal/ intellectual property knowledge! If you really can’t figure out your class, then it’s time to speak to a lawyer. If you’re happy you’ve found it, then select your class/es and term/s, then click next to continue.
Next, you’ll be asked if you want to supply a disclaimer. A disclaimer is good to exactly word out the rights you’re claiming in regards to your trademark but as they say on the page it’s irrelevant for 99.9% of applications, as the broad protection afforded is usually good. If you’re very unsure, consult a lawyer, if happy, select no and click next to proceed.
Next, you’ll be asked if you want to file a priority claim. You can only do this as indicated if you applied for this trademark outside of the UK in the last six months. 99.9% of you will click no, if you click yes you’ll need to provide proof of this filing to get priority. Click next and let’s proceed.
Then you’ll be asked to select your type of trademark, as they say, 99.9% will be the default option, trademark. A collective mark is specific to trade associations, and a certification mark guarantees the goods/services bearing your mark meet a standard of quality/ unique characteristics set out. Click your relevant option and click next.
Next, you have to select from two examination types (Order):
Standard: It takes around or beyond 20 days for examination, the cost is £170, it’s non-refundable and payable upfront.
Right start: It takes around or beyond the same 20 days for examination, it costs £200 in total, but you only need to pay £100 upfront. If your application is rejected at the examination for whatever reason, you only pay the £100.
For both, if you’ve added multiple classes it’s an additional £50 for each class. It’s up to you, but if you’ve done everything right, your trademark application should be processed without any issues.
The final section will show you all the details you’ve entered for your application, you need to review, amend as needed and click next to submit. (This cannot be changed once submitted so check thoroughly for spelling errors/ random classes!)
Once you’ve clicked next, you’ll be taken through to a payment page. Once payment is submitted you’ll see a confirmation page, make sure to screenshot your application number. You should also receive an e-mail soon, but just in case it’s good to have the number for reference. Now you’re done, sit back and wait a really long time (usually three months) for the trademark to be filed. It may also be challenged at this stage once it’s published in the trademark journal.
This is not advice or legal advice just a quick guide made from experience. Most people will not need lawyers for trademark filing, but if your case is more complex or you’re very unsure, it’s worth doing it the right way and getting legal advice/ searching the internet a lot more!
If you want a hands-on guide to branding/ trademarks, our friends at the Business Show are holding a masterclass on branding from the IPO, which you can register for here.