“As anyone who has started an organization from scratch can tell you, there are a million tasks, big and small, and no instruction manual for any of them.”
Angela Duckworth - Grit
This isn't quite an instruction manual but it's a write up of the process we went through. Hopefully those days we spent on google and traversing gov.uk will make it a little easier for the next person trying to do the same.
Saying that, please don’t consider this legal advice, neither of us are lawyers. You might see a follow up blog called 'why we should have got a lawyer to register our trademark' in 5 years time.
Though I have a law degree, 19 year old me decided not to study anything non-compulsory that might have been useful for running a company.
We decided to ask around our friends who already worked in start-ups how they went about registering a trade mark.
Answers ranged from:
- “Don’t worry about the trademark for now as long as you’re not infringing on anyone else. You’re early stage enough that you’ve got bigger problems.”
- “What if you launch and someone trademarks your name before you do? You should get a lawyer.”
- “We did it ourselves. Don’t pay someone for this. You’re not Apple.”
We also posted in a couple of start-up Facebook groups I was in. Nobody replied.
The next step was to find out how much this might cost were we to pay a professional to help. As with anything there’s always an balance between the time it will take you, consequences of getting it wrong both short term and long term, and available funds.
We went on Lexoo (a marketplace for freelancer lawyers) to get some quotes.
We got 5 quotes back (in 2 days - super quick service from Lexoo) - ranging from £200 - £700
Some of these included the trademark office application fee but most didn’t. At time of writing it’s £170 for the application + £50 per additional class you register in. Source: https://www.gov.uk/how-to-register-a-trade-mark/apply
This was not something we wanted to spend too much on. We barely had any revenue at this point and wanted to see if it would be possible to work out how to do it ourselves.
The trademark office will pre-review your application for £30 extra
The trademark application fees of £170 ish are non-refundable.
The government offer a service where they will let you pay half of the application fee upfront. Sounding like it was made by a civil service name generator - the scheme is called 'Right Start'
If you use this scheme they will review your application for you to tell you if they think it will be approved.
Examination takes the same time as the standard examination service, but we will e-mail the examination report to you and if there are any problems you can discuss them with the examiner. If you decide to proceed with your application you must pay us the outstanding balance of the application and any additional class fees. If you decide not to go ahead, you can let your application lapse and not pay any further fees.
So instead of risking losing the whole application fee, you only risk half.
You then pay the remaining half + the £30 extra this service costs to continue your application.
We decided to give it a go based on this being much cheaper than hiring a lawyer and backing ourselves to figure it out.
Working out what classes to apply in
The trademark will only apply within a certain class. For example, 'Apple' could be trademarked within technology related classes (class 9) but not in food related classes (class 27) - though I wouldn't put it past them to find a way.
- Here's the Gov.uk guide on picking a class: https://www.gov.uk/guidance/how-to-classify-trade-marks
- They then link you to this EU based class search tool: http://euipo.europa.eu/ec2/
If you search for 'software' in that tool you get presented with class 9 and class 42 as suggestions.
We were pretty sure we’d need to apply in class 9. We were making software and this was the class definition:
Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus
But software as a service also sounded like it might be a service.
We started looking for examples of what other London based SaaS and tech companies had done. The trademark database is searchable by owner (https://trademarks.ipo.gov.uk/ipo-tmowner) so this information is easy to come by.
One thing to note, trademarks will be under the registered company name and not the product/brand name. For example, our company name is Coro Ltd. but the trading name is Personably.
'Design and development of computer hardware and software; development of computer software application solutions; software as a service [SaaS];'
So classes confirmed, here were the other things we had to consider: (Source - https://www.gov.uk/how-to-register-a-trade-mark/what-you-can-and-cant-register)
2. What you can and can't register
Your trade mark must be unique. It can include:
- a combination of any of these
Your trade mark can’t:
- be offensive, for example contain swear words or pornographic images
- describe the goods or services it will relate to, for example the word ‘cotton’ can’t be a trade mark for a cotton textile company
- be misleading, for example use the word ‘organic’ for goods that aren’t organic
- be a 3-dimensional shape associated with your trade mark, for example use the shape of an egg for eggs
- be too common and non-distinctive, for example be a simple statement like ‘we lead the way’
- look too similar to state symbols like flags or hallmarks, based on World Intellectual Property Organization guidelines.
The clause we were concerned about was ‘too common and non-distinctive’.
Personably is a word in itself so we thought that would rule it out. However we found some examples of other companies that had trademarked real words within certain industries.
So we were trying to register Personably in classes 9 & 42.
Now subclasses. These are listed next to each class - I’m still not totally sure of the purpose of them. You don’t have to define them yourselves, there’s a list you can choose from but it reads like it’s not been updated in a while.
We selected some based on what we’d seen on our reference companies and defined one of our own.
We decided to go for it. The risk of losing half the application fee was worth it compared to the definite cost of paying for a lawyer. If it got rejected we’d then look for a lawyer to help.
We applied and got a reply a few weeks later saying it was likely our application would be approved and to pay the remaining £125.
We then subscribed to updates on our trademark application - you can do that here - (source: https://www.gov.uk/track-a-trade-mark)
2 months later...
We got an email saying our trademark status had been changed to registered
You can see our trademark here: https://trademarks.ipo.gov.uk/ipo-tmcase/page/Results/1/UK00003233562
As you can see this was a result of lots of googling and looking for comparables. Much like software engineering.
This is literally everything we know about the topic so if you’re looking for advice beyond this maybe ask a lawyer...