Securing Your Brand “Real Estate” Before it’s Too Late

When setting up a new business, brand or product, the first step many people think about is trademark registration. However, in this digital age of business, there is much more to consider and many fall victim to the pitfalls of not properly securing all the “real estate” for their new mark.

For example, registering your domain name or accomplishing business or company name registration with ASIC is important. However, it does not entitle you to own the domain or business or company name, unless you have registered the name as a trademark. Only trademark ownership provides you with a monopoly to the name and enables you to initiate court proceedings or arbitration proceedings against any third party that uses the name. Although domain name and trademark registration are equally important, we recommend filing a trademark application first, while applying for the domain and business/ company name.

Today we have put together a checklist of some of the most common pitfalls to account for during the planning stage before registering a trademark.

Facebook

If you’re considering using Facebook for a new business or brand-related page, use Facebook’s search function to confirm that the name you want is available. You can also try to create your page in order to determine its availability.

With more than three million small businesses currently advertising through Facebook, it can be a powerful tool in establishing your online presence.

Twitter

Similar to Facebook, Twitter began as a personal social sharing tool and has since become big business. In fact, a quick search will show that Microsoft has more than 40 different accounts on Twitter for its various products, brands, and causes!

While you can be relatively flexible with naming conventions on social media, it’s certainly desirable to get an account name that is most directly related to your product or brand, as well as finding a name that isn’t already saturated.

Domain Name

Missing out on your domain name can be both painful and expensive especially if you have already established your brand. Another business owner may have your ideal domain name registered, but at other times, the motivations will be more malicious.

‘Domain scalpers’ are people who make a business out of registering domain names, sometimes stealing them the moment they expire. This can be costly for businesses that have grown their brand and have become synonymous with their domain. Just ask Google, who ended up paying $12,000 to buy back their domain name after they accidentally let it expire – for barely a minute.

While there should probably be laws prohibiting this kind of behaviour, the message is simple. Search for and register your trademark and corresponding domain early – before you have paid to develop your entire brand – and be vigilant in renewing your trademark and domain when it is close to expiry.

Business/Trading Name

Registering a business name is similar to registering a trademark – in that it can’t already be taken, and it can’t be a name that sounds too similar to an existing business name. To ensure the validity of your trading name, you can use the Australian Investment and Securities Commission’s (ASIC) free business name availability search.

Remember, registering a business name is different to registering a trademark and you will have to do both for complete protection. Always register the word trademark first. This enables you to obtain the domain and ensures that use of your preferred domain name does not infringe third party rights.

Trademark

Checking the availability of a trademark is likely to be the final step.

Searching for a trademark is slightly more complex than searching for a Twitter handle or domain name and requires searching through IP Australia’s ATMOSS database. In addition to having stricter rules to avoid trademarks that sound similar or have the potential to mislead consumers, there are rules governing what trademarks are acceptable for registration – such as being distinctive.

Because the rules governing trademarks are more complex, you’ll want to ensure that your planned trademark is eligible and valid. Getting advice from a skilled IP consultant before committing to a brand name is a good way to support your brand planning.

When it’s time to register your trademark, our trademark specialists can assist you in planning your brand and trademark strategy – both within Australia and internationally. Speak to one of our specialists today and let us know how we can help you protect your business.