March 4, 2013

Watch your words?

word soup

Image from here

Last week a little email wandered in to my inbox. It wasn’t unkind but it did make my heart skip for a moment – it questioned the use of my blog title in terms of a registered trademark.

I contacted Jacqui on the advice of an online friend and she helped me out. I figured if it could happen to me, it could happen to someone else so she kindly answered a few questions.

Jacqui – tell me about your company?

I started Mark My Words Trademark Services Pty Ltd in November 2011 after working for about 12.5 years in the trademark space for other companies. My mission through my company is to bring trademark consultation and registration services to the smaller/home based business sector in Australia; to allow everyone access to professional services that are often thought to cost an arm and a leg, when they actually don’t have to. We provide a start to finish trademark service, from initial searches through to securing registration and also provide assistance with infringement matters, opposition matters and pretty much everything else connected to trademarks!

There are some great responses to general questions here  but what else should people know?

The first thing that everyone should think about before establishing a blog, a product, a business or really, anything that involves a name or brand is a trademark search. Searching first can ensure you’re not likely to be hassled by a trademark owner claiming infringement of their rights. I believe that everyone should look to protecting their own trademarks,  yes – but, certainly searches should be considered as a critical part of any start up phase. You can conduct your own searches or employ an agent to conduct professional searches for you.

There is so much talk in the blogopsphere about ‘your brand’ is it possible to have a ‘brand’ if its not trademarked?

I think so. Firstly, a trademark actually exists whether registered/protected or not. A trademark is any ‘sign’ that you use to distinguish your products or services from those of other people’s. So, the name of a blog could be a trademark. A registered trademark however is a protected version of that name. A brand could also be a name of a particular product or service – so in this sense would be interchangeable with the word trademark, but, a brand could also represent a person’s values, styles, colour themes etc. It’s definitely possible to have a brand if it’s not registered as a trademark, but unless registered you could never be certain that it’s truly yours. Someone else could go behind your back and register it – leaving you close to powerless to stop them from using and promoting your ‘brand’. So, registering trademarks can certainly provide peace of mind moving forwards in any new venture.

If people are in doubt what are your top tips?

1.    Trademark searches are available before you launch any new ‘brand’. Having these conducted can ensure you’re moving forwards safely and without fear of stepping on any toes and facing potential law suits.

2.    Registering trademarks does not have to cost as much as often assumed. For example, through my company you’d start at around $900, spread over 2 stages and 7 months to secure rights for 10 years. Doing it yourself would obviously be less than this.

3.    Trademark rights are country by country. I often hear that people are contacted by overseas owners for use of names on blogs/social media networks etc. If you are promoting a name/brand in Australia  then only the owner of an Australian trademark can make any allegation of trademark infringement. So, if you ever are contacted by a trademark owner threatening infringement action – seek advice. It may not be as true or serious as it first seems

Thanks Jacqui! Visit her here for more information

Most blogs are born out of the need to share your story – the business aspects sometimes dont come in to play when the need to talk is there.

Have you ever thought about trademarking in terms of your personal blog?

NB This isn’t a sponsored post – just some tips to keep the anxiety at bay should it happen to you. 

Join the conversation! 9 Comments

  1. This is a great post Sarah. I have dabbled in intellectual property, domain names and trade marks at my work and it really is a minefield if you don’t protect yourself properly. While I don’t think I would ever go down the trade mark road, I think anyone who is monetizing or who has a business attached to their blog should seriously consider all the available protections that apply to them to ensure their intellectual property is secured. Thanks for sharing this information!

    • Thanks Kirsty – I think what struck me was that the reasons for the birth of a blog might be far from fantasies of monetizing it so people might not have thought through this options in the first place – thanks for sharing over at your page x

  2. Ah this is a topic close to my heart/head. When I “thought” of I wanted to see if I could TM it. Over a period of weeks ( and paying the money to IPAustralia- govt agency) I found out:-
    1. There was no currently registered TM in Australia for those words (in fact, I deliberately put full stops in to help my unique status)
    2. I went ahead & paid more money for the longer & world wide search to be done.
    3. As I have not really made money from that title, I didn’t do the last stage of fully registering it to become mine- world-wide.

    The fees all up (I paid) were close to $400 then to do the final bit which I decided against was going to be around $700 more.

    I don’t use the TM (although I could) and even though I know there are companies out there (US based mostly) not one of them was found by IPAustralia via the search as none had gone through the process of applying for the ownership.

    So in my case, I “did” it right initially, and found IPAustralia very helpful but I am definitely comfortable with how I have settled on what I have now.

    And as for another topic…professional indemnity – I pay more than a psychologist…seriously!! I’ve tried to bring it down but v few insurers will do Education Consultants so its expensive – $1000 annual

    Gawd, will I ever be able to afford to have that coffee one day! Denyse x

    • Hi Denyse – your comment is an interesting one to me, and I hope you don’t mind me replying in the hopes that others that might be along to read can learn a little more about the ‘trademark system’.

      Firstly, there’s no such thing as a world wide trademark, or way to secure a ‘world wide’ right to a name. So, your comment about not finalising the process to make it yours world-wide is a little puzzling to me. Trademark registration is a country by country process. If you filed with IP Australia as step 1 then step 2 is to finalise with IP Australia, which only protects your brand in Australia. Likewise, your comment about having a longer/world wide search conducted is a little puzzling as you seem to suggest IP Australia conducted this search? Would love if you could clarify this point, as currently they don’t offer such a thing.

      You also mention that there are other companies out there using same/similar names, but none of them were found in the IP Australia search. This will likely be correct, especially if they are US based. IP Australia will only consider trademarks on the Australian trademark database during the examination of an application. (They won’t even look at business/company names – only Australian trademarks). So, if you were planning to promote your trademark outside of Australia you’d be encouraged to search on the databases of those other countries and go through trademark registration in those other countries.

      Obviously, each person/business is different and will have different reasons for applying or not applying for protection of their brands. If you are not using/monetising the brand then it may simply not be worth the time and money to you to go through the trademark registration process. I still encourage people to have initial searches done in these cases, because the cost of infringing someone else’s rights certainly wouldn’t be worth it!

      I look forward to following the further comments on this post, and, am happy to answer any questions that might come about 🙂


      • Thanks for taking the time out to answer some of the comments Jacqui – Denyse’s point about money out versus money in is often at the heart of why I sometimes dont invest in myself. I think issues like those make that statement a silly one.

        Take care

      • Thanks Jacqui- that was most informative. However at no stage did I deal with any agency nor anyone other than a representative from IPAustralia. The one person I had conversations with was the first one (& only) I spoke to & he was prepared to answer many of my questions as I went through the site with him. He then sent me the paper work & I complied with payments to get me to the point I am now. As Sarah said I opted not to go further as my blog is not monetized. My work is based on my education expertise & was my idea to help he readers & future clients get an idea of what I could help with. I was sent results of searches & the final letter which I didn’t go ahead with – to do with finalising the payment to be able to say (as I understood it) to have a registered trademark. Thanks for your further explanatation. Denyse

  3. Hi Sarah
    I had a similar ‘heart stopping’ email about a photo I used in my blog. Before I started blogging (with the intent to monetise it) my lawyer told me I should always use photos that I either purchased or got from a ‘creative commons’ type pool. I was just naiively using Google images and the like. So, I’ve only used photos I purchase from iStock or ones I take myself. A few weeks ago, I received a polite, but ‘no nonsense’ email from a photographer citing one of the photos I used, informing me he had no record of me having a license to use it and could I tell him how long I’ve used it and where so he could charge me licensing fees. My heart skipped a beat because I have images of thousands of dollars of back pay for something like that and wondered if I had overlooked something with iStock. I sent him the proof of purchase and he emailed back saying that was fine and was the legal way to do it etc etc and that iStock don’t always inform them of photo purchases. But it was to me another sober reminder of treading carefully. I’ve written a few hard copy books through publishers and with every book I’ve had to write to everyone I quoted for permission to quote them (referencing them was not enough) and sometimes I was charged for the quote. The information about Trademark is interesting and very helpful. I had always thought it was tens of thousands of dollars. I may look into it for a new blog I’m setting up now. Denyse, I can relate to the feeling of ‘lots of money going out and not much income coming in yet. We’ll get there I’m sure!

    Sarah, I also think you raise an excellent point that the birth of many blogs are the ‘desire to write’ and then when they grow organically it suddenly puts them in a different arena.

    • Thats such an important point Linda – especially when traditionally the more creative careers tend to be money-poor. We should never do anyone out of an income stream by using things without their permission. Its hard to calm those nerves especially when you imagine what it might cost!
      Thanks so much for commenting – these types of posts arent my usual ones, by trade Im focussed on stories but even stories need their legalities ironed out! x

  4. One more thing that is linked to the above is remembering with blogging & writing anything on line about the laws of libel etc. Prof Mark Pearson’s Book is worth a read and he’s a presenter at DPConference in 2013. D


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