The Moving Series Episode 5: Back To Naming Basics

Out in the wilds of Cumbria, we find Sally bemused that new businesses there are missing some of the most basic steps. Could be that its simpler and cheaper to make a few mistakes and Up North they are often less flash with the cash. Nevertheless Sally has a few FREE tips to avoid some of the more obvious mistakes when setting up a new business.

Here is what Sally has to say:

I hazard a guess that any professional move is going to involve “carrying on with what you do – but not necessarily in the way you did it before”.

Until the end of 2014, my office was often the only result on a search of the (old) website of ITMA for Trade Mark Attorneys in “Cheshire”. Now it’s the only office that appears on a search of the (new) website of ITMA for Trade Mark Attorneys in “Cum

Some Pitfalls a Trademark Attorney can't help with

bria”.

So there’s lots of experience (going back over some 24 years) of explaining both the services a Trade Mark Attorney is qualified to offer and how an Attorney can “add value”.

And (of course) this includes experience of trying to explain to any new business the relevance of checking (and double-checking) whether using a particular name might attract unwelcome attention.

Back in February 2015, Sean Gilday posted “Tell Me Your Invention!” so that he might direct

potential clients to this blog to put their minds at ease on the issue of a Patent Attorney’s (statutory and other) obligations of confidentiality.

Moving an office to a new location brings a new set of challenges and – whilst it’s not the way I would have done if before – I’m posting “Back To Basics” to follow in Sean’s footsteps.

Appearing below are draft paragraphs that see the light of day from time to time when any local business-to-business publication asks for “copy”. I’m posting here primarily so that I might direct any new business to this blog :
You may has registered a company and you (or your company) may own a Domain Name – but using a particular name might nonetheless attract unwelcome attention!
[ Draft paragraphs ]

1) Check at Companies House 

Whether or not you want to incorporate a company at the very beginning of trading, it’s a good idea to visit the website of Companies House . It was at www.companieshouse.gov.uk  but is now part of the portal at .gov.uk.

The “Company Information” section includes a search facility where you can type in the name you want to use and see whether others might be using this name in your line of business.

It’s a mistake to think that once you get your name onto the Register of Companies that’s all you have to do to be sure the name is yours. The website of Companies House includes warnings to this effect.

2) Check with Registrars of Domain Names 

 You’re likely to be running searches on the Internet to see whether another business already has the name you want as part of its Domain Name. All Domain Name Registries are obliged to provide WHOIS information. If you want to know more about a name in the .co.uk space (for example), then visit the website of Nominet at www.nominet.org.uk.  Another useful resource is http://whois.domaintools.com/

Please don’t be one of those people which thinks “I can have [name I want].co.uk – and that is all I have to do to be sure the name is mine”. A registrar site such as Europe Registry at www.europeregistry.com is useful for checking where someone may have claimed [name I want].co.uk outside of the .uk space. However when using a registry site to do searches be prepared to register as searched domains can be taken by those who monitor searches. If you feel domains are going to be central to your brand strategy talk to a trustworthy specialist registrar like Com Laude.

3) Be aware of the trade marks of others 

 Whilst you’re looking at the information that comes to you through searches on the Internet, take care to note any TM or ® symbols. And don’t ignore the “legal” information that’s often at the bottom of a web page: this often gives information about use of the TM and ® symbols.

TM simply means “trade mark”. As a trade mark is (obviously) any mark used in the course of trade, TM serves the purpose of warning that a business claims rights in (say) a name of logo. But use of TM doesn’t provide information on the strength (or weakness) of those rights. In fact, you might want to think of using TM .even if you haven't applied to protect it yet.

The ® symbol also serves the purpose of warning that a business claims rights in (say) a name or logo – but this time it’s “registered trade mark rights” and anyone that’s using a marks that’s the same-or-similar for same-or-similar goods or services risks allegations of infringement of “registered trade mark rights” under (in the UK) the Trade Marks Act 1994. If legal proceedings are taken, they can lead not only to a legal order (an injunction) to stop you using [name I want], but also orders for payment of sums of money (damages of an account of profits) to the owner of prior rights in [name I want].

4) The value of Trade Mark searches

If you want to avoid  for trade mark risk, the best way is to have a professional full availability search carried out against [name I want]. If you prefer not to use a trade mark attorney then the best resource available to you is TMView which will help you cover some of the similar names as well as those that are an exact match. If the UK market is all that interests you, then the UK Trade Mark Registry has a search tool for that here.

If you have been using [name I want] for some time without problems arising, you can file a trade mark application and the UK IPO will give you search results as part of the application process. Unfortunately they can miss some big risks and you may still find yourself faced with an opposition. Sometimes a larger brand may not be too concerned about a local lifestyle business but once that business puts its name on the register, it may be a completely different scenario.

The Duck says It really is worthwhile talking to your friendly local trade mark agent (especially if you are in Cumbria)