3 Steps to Trade Mark a Word

Angus

• 7 June 2021
• 28 June 2021
• 4 min read

The words that are associated with your business, product or brand are essential. They illustrate what your brand stands for in the marketplace. When you decide to trade mark a word, it can be a simple process if:

• your goods and/or services are relatively unique; and 
• the word you are trade marking is not widely used. 

However, sometimes it can be a bit trickier. It is vital to make sure you get the appropriate advice before you make any lasting decisions. This article will explore the three key steps you should take before you trade mark a word. 

1. Decide on the Word to Trade Mark

It may seem obvious, but deciding on the word you want to trade mark can be a difficult decision. It should be unique and represent your good or service well. When making the decision, you should ask yourself:

• 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.

Once you have decided on the word, you can move onto the next step of using the picklist to decide on the class to use.

2. Use the Picklist

Searching the picklist is your next step. The picklist is a database of over 60,000 examples setting out what classification your good or service fits into. IP Australia provides the picklist to help you pick the correct classification. In addition to helping you make the right decision, lodging an application using the picklist will attract reduced fees in some instances. 

For example, if you do not know what class your advertising business falls into, you can search ‘advertising’ and you will see that your business falls into class 35. You can then use this information in your trade mark application and attract a lower fee and a quicker processing time.

3. Decide Whether to Lodge a TM Headstart Application or a Standard Application

Next, you will need to choose between lodging a TM Headstart application or a standard application. The differences between these two types of applications are set out below.

TM Headstart Application

Lodging a TM Headstart application occurs in two stages. The first stage is a preliminary application lodged through IP Australia that allows you to receive further evidence or information from the examiner that you may need to provide to finalise your application. It allows you to lodge an application without committing to a position too early.

However, it is important to note that: 

• it is more expensive; and 
• the time frames for providing evidence are a lot shorter than in a standard application. 

If you do obtain a favourable preliminary decision, you can lodge part two of the application and proceed to registration. 

Standard Application

A standard application occurs in one stage, meaning that you should try to get it right in the first instance as there is little scope to amend your application after filing. IP Australia usually provides a response to a standard application within three to four months of lodging. 

Once your application has been granted, you then have 10 years until you need to renew it. IP Australia will send you a letter when it is time to renew. 

Key Takeaways

Before deciding what steps you should take before you trade mark a word, you should consider:

• what word you want to trade mark and whether it accurately reflects your business;
• what class of business you have and what classification your goods or services fit into on the picklist; and
• whether you want to lodge a TM Headstart application or a standard application.

There are benefits to lodging a TM Headstart or a standard application that depend on your unique circumstances. If you have any questions about applying to trade mark a word, contact our experienced trade mark lawyers on 1300 657 423 or fill out the form on this page.

Frequently Asked Questions