31 May 2017

Can I apply for a Trade Mark by myself or must I instruct an Attorney?

Jane Lambert

The answer is "yes".  You can apply for a trade mark without an attorney. It has been done many times before.  You will get a certain amount of practical help (though no legal advice) from the Intellectual Property Office ("IPO").  But I would not recommend it. It's a lot of trouble to save yourself a few hundred pounds and it could land you in a lot of extra expense as there are lots of pitfalls in the process.

Why you should instruct an Attorney
It takes time to qualify as a trade mark attorney.  Trainee trade mark attorneys learn about the sort of marks that are registrable and those that are not.  Attorneys know what to look out for on a trade mark search. They know how to draft your specification in a way that is wide enough to cover every business activity you are likely to undertake but not so broad that it leads to an objection. If, for any reason, there is an objection to your application an experienced attorney stands a very good chance of resolving it quickly and inexpensively.

Where to find an Attorney
If you do not already instruct a trade mark attorney here are some possible ways of finding one.  You can consult the Chartered Institute of Trade Mark Attorneys' website. There is a link to a searchable database of all the attorneys in the country.  If you want a personal recommendation, I can introduce you to attorneys with whom I have worked successfully in the past.  You could also attend one of the IP clinics that the Chartered Institute of Patent Attorneys run in conjunction with Business and IP Centres and PatLib libraries around the country.

What to do if you decide not to take my Recommendation
If, despite my recommendation, you decide not to instruct a trade mark attorney:

Tip #1 Read the IPO guidance very carefully.
The IPO has published the following useful guides:
Make sure you understand everything in those documents before you do anything,

Tip #2: Carry out a thorough trade mark search
You can search the IPO, EUIPO  and ROMARIN databases yourself or you can ask the patent librarian at Leeds Business and IP Centre or certain other PatLib libraries to make a search for you for a small fee.

Tip #3: Make sure that your application covers all relevant goods and services 
You register a mark in respect of specified goods or services. Make sure that the goods and services in respect of which you register your mark cover not just simply the goods and services that you are supplying now but all those that you plan to supply at any time over the next 5 years.

Tip #4: If there is an objection to your application take professional advice at once
If the examiner says that your mark is unregistrable because it falls within one or more of the absolute grounds for refusal provided by sections 3 and 4 of the Trade Marks Act 1994 or if a third party objects on the grounds that your proposed registration is too close to his or her mark then your application is in trouble. Sometimes such objections can be resolved by negotiation. If not they may go to a hearing before an official known as a "hearing officer". Should that happen the costs will escalate sharply.

Tip #5: Consider IP insurance
IP litigation can be ruinously expensive, especially for small and medium enterprises.  You can insure against those costs by taking out specialist IP insurance before a dispute actually arises.

Tip #6:  Engage a Watch Service
A watch service looks out for applications that are similar to yours so that you can object to a third party's application and try to hammer out an agreement at an early stage. Leeds Business and IP Library offers a very cost-effective one. Several trade mark attorneys and other commercial organizations also offer watch services.

If you are still considering whether or not to register a trade mark or if you have applied to register a trade mark and hit any of those problems, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.