5 Steps For Trade Marking a Phrase
The phrases that the public associates with your business, product or brand are important. They distinguish your brand and help customers recognise your business. It can be relatively straightforward to trade mark your signature phrase if it is unique, relates to your good or service, and is not already in use. If your phrase does not meet the above criteria, it can be more difficult. This article will set out the five main steps you should take when trade marking a phrase.
Step #1: Decide on the Phrase to Trade Mark
Deciding on the phrase you want to trade mark can be challenging. It needs to both represent your good or service and be unique. When reviewing whether your phrase is something you can trade mark, you should consider:
- what your business is known for;
- what word you want people to associate with your business going forward; and
- whether the word you want to trade mark explains or represents your business.
If your phrase relates to your business’ core functions, you can move onto the next steps in the process.
Step #2: Search For Similar Trade Marked Phrases
Once you know the phrase you want to trade mark, you need to search the trade mark search tool to see if similar trade marks are already registered. If there are, it may be difficult to trade mark your particular phrase, and you need to decide whether to:
- challenge the registration of the trade mark; or
- change the phrase you want to trade mark.
If you decide to challenge the registration of somebody else’s trade mark, it is advised that you seek legal advice, as it can be a difficult process.
Step #3: Use the Picklist to Decide On a Classification
The next step in the process is to search the IP Australia picklist and decide which classification you will lodge your trade mark application under. IP Australia created the picklist to assist you in making the right decision when lodging a trade mark application. In addition to easing the burden of deciding what type of classification applies to your trade mark, using the picklist correctly can help you pay lower fees.
For example, if you do not know what class your fencing business is in, you can search ‘fencing’, and you will see that your business falls into service class 37. You can use this information in your trade mark application, which will help you pay a lower fee and generally enjoy a faster processing time by the examiner.
Step #4: Decide The Type of Application to Lodge
The second last step in the process is deciding whether to file a standard application or a ™ Headstart application. The benefits of each process are explained below.
The standard application only has one stage. This means you generally only need to submit one set of documents. However, it also means that you have less scope to amend your application after filing it. IP Australia will usually respond three to four months after the filing date. However, once you receive approval, you have protection for ten years.
A ™ Headstart application is slightly different from a standard application. The application under ™ Headstart occurs in two stages. The first stage is a preliminary application. It allows you to get quick feedback on IP Australia’s position concerning the phrase you would like to trade mark. The examiner will let you know if your trade mark is likely to succeed, and most importantly, what additional information you may need to lodge to obtain a favourable trade mark determination.
It is important to recognise that the ™ Headstart application is more expensive, and the time frames for providing additional information are a lot shorter. This means if you are not ready with all of the required documents, you could be wasting money under a ™ Headstart application. However, with the information you have from the ™ Headstart application, you will be better placed to lodge a standard application, even if you cannot respond in time.
You can begin the second stage if you obtain a favourable preliminary decision in your ™ Headstart application. You need to pay the additional fee, and then IP Australia will send in your phrase for trade mark registration.
Step #5: Lodge and pay for the application
Once you have filled in your application form, the final step is to lodge and pay for your application for your chosen phrase. IP Australia will then respond to you, indicating whether your application has been granted or refused. If IP Australia refuses your application, the examiner will provide you with an adverse report giving you time to respond and appeal.
Before deciding to trade mark a phrase, you should consider:
- the type of phrase you would like to trade mark;
- the class that your trade mark falls in; and
- the type of trade mark application you would like to make.
Frequently Asked Questions
The cost for a standard application that uses the picklist for a single class is $250.
Generally, the IP examiner will respond to your standard application within three to four months.
It will generally take five days to get an initial response on a ™ Headstart application.