Trademark – who to contact/how much?

[PinkTink]

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Ive seen a few posts that it is wise to trademark your business name.

What is the process and how much does it cost?

[exstatic]

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Hi PinkTink,

Have you been to the IP Australia website? – http://www.ipaustralia.gov.au/

That will answer pretty much everything you need!

[PinkTink]

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Also can you trademark a popular saying like say “tickled pink” thats not what I want to trademark but gives you the gist.

[Saltprint]

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The IP Australia website has heaps of info, and to be honest can sometimes be overwhelming.

“IP Lawyers” are really great value, because you can talk about your real ideas to a real person. It sounds like a scary person to talk to, but they’re really nice

I think you can get a logo or name trademarked for under $1000 including the lawyer and government fees.

I’m sure http://www.ipaustralia.gov.au/ also has a list of lawyers you can talk to.

-Magenta xo

[Melinda B]

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I’m in the process of getting my business name “SuperWAHM” trademarked through the Headstart program at IP Australia. http://www.ipaustralia.gov.au/trademarks/tmhs_start.shtml

Very easy process to apply for. It cost me $90 to submit the initial application, and then another $90 when it was accepted (about a week later). It’s in the waiting phase now and I have to pay $250 as the registration fee before the six months is up.

[Allied]

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Hi Pinktink

The process through TM headstart is easy and they will call you and discuss any problems you are facing. You can search names and words yourself first but you need to be very thorough and look for all combinations etc. A name like you suggest may be easier to get if you also have a very distinct logo to go with it. Its will be a bit difficult when you use common words like ‘pink’ & ‘tickled’ without another unique word to go with them to distinguish yourself from others with similar names. A made up word like ‘Pinktink ‘ would be easy to register. You also need to look at the classes you want to go in. If the class descriptions don’t suit in TM Headstart you can go through the normal process and type in more details for your class description to suit your business. The application will take a bit longer to do but it may suit your business better.

[victorng]

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Going through the Headstart program is a good idea. It will give you an idea of whether your mark can be registered.

A few things to note though – (1) although they are generally thorough, the report is not binding on the Trade Marks Office, (2) there’s more to getting your trade mark ‘right’ than just making sure it is capable of registration.

Importantly, you also need to get your description of goods and services right. This can be a simple or not so simple task, depending on what you’re using your trade mark for. I’ve actually just written a short post about this on my blog: Beware the trade mark time bomb.

Cost-wise, doing it yourself can cost as little as $370 in government fees from start to finish, depending on how many classes you apply for.

Getting professional help can cost anywhere from $1,000 to $1,500 (including government fees) from start to finish. More expensive obviously but you get some peace of mind knowing that someone who knows what they are doing is taking care of things for you (and it’s really not a lot of money for an appreciating asset considering the amount spent on depreciating assets such as, for example, a computer).

Cheers
Victor

[Melinda B]

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victorng, post: 58626 wrote:

(1) although they are generally thorough, the report is not binding on the Trade Marks Office,
What do you mean it’s not binding on the Trade Marks Office Victor?

[victorng]

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Melinda B, post: 58628 wrote:

What do you mean it’s not binding on the Trade Marks Office Victor?

Hi Melinda,

A clear TM Headstart report does not guarantee that you’ll get a clear examination report when your trade mark is actually filed. In other words, if there is an objection at examination of the actual application you can’t overcome it by saying that you got a clear Headstart report.

One reason for this is that the Headstart report is valid only for the day it is given – that’s because your application is only considered officially filed when you pay the stage 2 fee (consequently, protection only starts from the day the stage 2 fee is paid). So, any change to the register between those dates will affect your application.

I had a quick look at the info on Headstart on the IP Australia website and I notice that the warning that they use to give under Headstart’s predecessor (which had the more uncool name of ‘Assisted Filing Service’) that the report is not binding is no longer made. It may be that the same examiner examines both the Headstart application and the proper application so the chances of a different report are less likely (under AFS there would often be different examiners).

Headstart is a really handy process to have but there are some shortcomings (including that you must use the goods and services pick-list) people should be aware of.

Cheers,
Victor

[Melinda B]

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Yes, that was explained when I went through the process. I thought you had meant it wasn’t binding after filing!

[molly1717]

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Hi [USER=12102]@victorng[/USER] , may I ask – does the TM headstart do a thorough check – like in international databases – or does it just check more basic boxes (like whether or not it breaches one of the registration rules). It doesn’t really specificy on the website and I even called IP Aus and not gotten much detail!

victorng, post: 58629, member: 12102 wrote:

Hi Melinda,

A clear TM Headstart report does not guarantee that you’ll get a clear examination report when your trade mark is actually filed. In other words, if there is an objection at examination of the actual application you can’t overcome it by saying that you got a clear Headstart report.

One reason for this is that the Headstart report is valid only for the day it is given – that’s because your application is only considered officially filed when you pay the stage 2 fee (consequently, protection only starts from the day the stage 2 fee is paid). So, any change to the register between those dates will affect your application.

I had a quick look at the info on Headstart on the IP Australia website and I notice that the warning that they use to give under Headstart’s predecessor (which had the more uncool name of ‘Assisted Filing Service’) that the report is not binding is no longer made. It may be that the same examiner examines both the Headstart application and the proper application so the chances of a different report are less likely (under AFS there would often be different examiners).

Headstart is a really handy process to have but there are some shortcomings (including that you must use the goods and services pick-list) people should be aware of.

Cheers,
Victor

victorng, post: 58626, member: 12102 wrote:

Going through the Headstart program is a good idea. It will give you an idea of whether your mark can be registered.

A few things to note though – (1) although they are generally thorough, the report is not binding on the Trade Marks Office, (2) there’s more to getting your trade mark ‘right’ than just making sure it is capable of registration.

Importantly, you also need to get your description of goods and services right. This can be a simple or not so simple task, depending on what you’re using your trade mark for. I’ve actually just written a short post about this on my blog: Beware the trade mark time bomb.

Cost-wise, doing it yourself can cost as little as $370 in government fees from start to finish, depending on how many classes you apply for.

Getting professional help can cost anywhere from $1,000 to $1,500 (including government fees) from start to finish. More expensive obviously but you get some peace of mind knowing that someone who knows what they are doing is taking care of things for you (and it’s really not a lot of money for an appreciating asset considering the amount spent on depreciating assets such as, for example, a computer).

Cheers
Victor

[NickKaro]

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Hi Molly

As this thread is around 5+ years old, Victor may not be around, but [USER=20176]@JacquiPryor[/USER] is our expert around here on this topic so you may want to get in contact with her.

Regards
Nick

[victorng]

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True, it’s a blast from the past but don’t write me off just yet Nick!

Molly, to answer your question, TM Headstart will check for conflicting marks on the Australian database and advise you whether they think your mark is registrable.

What TM Headstart won’t do is advise:
(1) what trade mark to file,
(2) what goods and services to claim,
(3) if it’s possible to overcome any conflicting marks they find.

So Headstart is useful as long as you know it’s limitations. The above three questions are really important ones and that’s one of the areas that a trade marks professional adds value – ensuring you get the right trade mark for your current and future needs.

Cheers,
Victor

[JacquiPryor]

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Just a quick addition to Victor’s answer above… trademark registration (and therefore the rights connected to a registered trademark) are by and large a country by country thing. So, a clear headstart result as Victor noted will be considering only the AU register for conflicting trademarks. If you use (or intend to use) your brand in another country then you would need to consider registration in that country… searches can be carried out ahead of filing the application if needed (as most countries will not offer a pre-filing assessment like the Headstart offers in AU) -which is advised not only to help determine if you can register in that country, but, also to make sure that using the trademark won’t infringe the rights of others. Each country would ultimately need to conduct their own examination of any trademark application to determine if it may be registered.

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