What does a trademark lawyer do?

Choosing a good trademark can be one of the best business decisions you will ever make. So when you start looking into branding as a startup, it should definitely be something you turn your mind to, and a trademark lawyer can help you.

Most startups register their business name and domain name, some social handles and stop there. Of course these registrations are necessary, particularly your business name, (which should be registered with ASIC if it is not your own name) but these registrations do not stop other businesses in the market using the same or a similar name to you. By taking one extra step and registering your trademark, you will get exclusive rights to use your mark. This means you can stop other businesses using the same or a similar mark to you. When you have the exclusive rights to use your brand it also means you can license it, and sell it; it therefore becomes a very valuable asset on your balance sheet.

A trademark lawyer doesn’t just help you to protect your own brand, but also helps ensure you don’t infringe on other brands. They can make sure that you are not investing  $$$ in branding only to find out that your brand infringes on someone else’s. In this case you could end up having a very costly rebrand to do. A trademark lawyer can also help you to understand what makes a good trademark, and what the likelihood of a successful registration is. They will work out the best classes and descriptors to use for your trademark so that you are adequately protected, but do not spend money unnecessarily on registrations you don’t need.

Here are a couple of matters that a trademark lawyer will look at when determining whether your trademark is one that will result in a successful registration.

  1. Is it distinctive?

In order to get a successful trademark registration, your mark needs to distinguish your goods or services from another business’s goods or services. The best trademarks tend to be words that are arbitrary or invented,  like “Google” or “Canva”, or words which are evocative like “LinkedIn” or “Facebook”. These words then become common over time as customers associate your products and services with the brand. Whilst words that describe your business are great for a business name, they may not result in a successful trademark registration. For example, Baby Photographer would not be able to be registered.

Your mark really can’t be something that is too descriptive or too generic, and so something that other businesses will want to use. Everyday words like “smooth and delicious” for chocolate would result in an unsuccessful registration. However, it may be able to be registered in relation to something that seems odd, like legal services! Similarly, apple could not be registered in relation to food, but it very well could and has been registered in relation to computers!

  1. Does it conflict with existing marks?

Another basic trademark requirement is that your proposed mark cannot conflict with something that already exists on the Trademarks Register. To determine whether it conflicts with existing marks, various searches are required to be conducted. A trademarks lawyer knows the types of searches that need to be performed to ensure that there are no conflicting marks, or if there are existing similar marks, what the likelihood of success of your registration is going to be. If you are intending on expanding to international markets, then additional searches may need to be performed to see if you could register in other countries too. There may also be circumstances where even though there is a mark that conflicts with yours on the Trademarks Register, you are able to be successful in your registration, perhaps because you used the mark prior to them, or concurrently with them. These are nuanced areas that trademarks lawyers are expert at dealing with.

A trademark lawyer will also look at the big picture.

You might also be surprised to know that you can actually trademark things other than words, and logos. You can trademark aspects of packaging, shapes, colours, sounds or even scents. For example, and the shape of the Ferrero kinder surprise, and the Cadbury purple is trademarked. Yes, we are obsessed with chocolate here! (It was how I got through my first year of mothering!) A trademarks lawyer can look at the big picture, and explore the whole of your business to see what potential trademarks you have; there may be some you never even considered.

If you’d like the help of a trademark lawyer, please contact us, or book in for a free introductory consultation here. 

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