Welcome Jacqui Pryor - Trademarks for HBB

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Barbara Gabogrecan
President

Welcome Jacqui Pryor - Trademarks for HBB

Postby Barbara Gabogrecan » Sun Apr 15, 2012 3:52 pm

ImageIf you are looking to trademark your business name then you will be delighted to read some advice by a real expert in the field of trademark law. Jacqui Pryor is writing posts for the next 7 days on ‘Trademark Registration, and its Advantages to the HBB Sector’ Jacqui has more than 12 years of experience in Australian & International Trademark registration matters. She also holds a graduate certificate in Trade Mark Law & Practices, as well as a diploma in business management.

What is even more remarkable is that Jacqui is determined to provide trademark related services at the lowest fees possible, without jeopardising the quality of service she provides.

Jacqui’s has a passion for assisting small and startup businesses with their trademark enquiries and requirements through her company, Mark My Words Trademark Services. She believes that the protection of Intellectual Property is a crucial part of all businesses and that assistance should be available to operators of businesses of all sizes; that professional services in this regard should not be available only to large companies.

This is a rare opportunity to get information from an expert via this Forum, which of course is free of charge! Read the great tips and ideas that Jacqui will share with you and ask those tough questions you may have!

Join me in welcoming Jacqui by reading her posts and if you are a member, feel free to ask questions.
Barbara
Barbara Gabogrecan assists HBB's to market their business online
http://www.HomeBasedBusinessAustralia.org

Barbara is an artist specialising in silk painting; her video is on page one of You Tube http://youtu.be/1ZA9HObN_Go
http://www.SilkPaintingByGabogrecan.com/

Having survived a stroke and a brain tumour, Barbara wrote a book titled 'Thank God I Had a Stroke' to motivate and inspire others suffering from similar afflictions.
http://GabogrecanStrokeRecovery.com/
Barbara Gabogrecan
 
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Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Jacqui Pryor » Mon Apr 16, 2012 9:41 am

Trademark Registration – What is it?
Hi Everyone! I am pleased to be this week’s guest expert and hope you all gain something from my posts. I am going to spend a bit of time discussing the importance of trademark registration for the home based, and smaller business sectors so I thought a good place to kick off from is explaining what a trademark is, and what a registered trademark is.

What is a Trademark?
By definition a trademark is any sign that one trader uses to distinguish their products and/or services from those of other traders. A sign is then defined as being any word, image, symbol, number, colour, shape, aspect of packaging – even a sound or scent. So – in English?
A trademark exists whether it’s registered or not. Most often called a ‘brand’ – and, most often trademarks are names or logos. To qualify it as a trademark it needs to act as a badge of origin of your goods/services –that is, separates your goods/services from anyone else’s. For this reason, it’s difficult to register your trademark if it’s too similar to an existing trademark, or if it’s simply a descriptive and common term within your industry. For example, a name like “Best Shoe Shop” will struggle to register as a trademark because other people in the shoe business will likely need to use these same words honestly during the normal course of their business.

What is a Registered Trademark?
Basically, it is a protected version of the above. By the technical definition a trademark exists whether registered or not, but it is not really protected nor exclusive yours unless it’s officially registered. A registered trademark gives the owner the following rights that they don’t have otherwise (i.e. a register business or company name does not offer these rights)
1. The right to use the trademark for the goods/services they nominate;
2. The right to authorise others to use the trademark for the goods/services chosen (i.e. to license to the use to others; or authorise use in franchise situations)
3. The right to stop others from using the same/confusingly similar trademark for those goods/services.

Without trademark registration, a business is quite limited in their options in trying to stop others from using the same/similar ‘brand’ – and, could not franchise their business and include an authorisation to use the name/logo or other distinctive sign. It's also possible for a business to be found in breach of someone else's rights even though they have a business name or company registered.

Tomorrow I will be discussing the advantages of trademark protection. Apart from the main rights outlined above, there are a number of benefits to registering trademarks so stay tuned! I welcome any questions or comments you may have.
Jacqui Pryor is an Australian Trademark Specialist with 13 years experience in trademark matters, and holds a Graduate Certificate in Trade Mark Law & Practice.
Jacqui is also the director of Mark My Words Trademark Services, providing affordable, friendly and reliable services in connection with trademark registration and related matters.
Web: http://mmwtrademarks.com.au/
Email: info@mmwtrademarks.com.au
Blog: http://mmwtrademarks.wordpress.com/
Jacqui Pryor
 
Posts: 11
Joined: Thu Mar 29, 2012 10:06 am

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Barbara Gabogrecan » Mon Apr 16, 2012 2:03 pm

What a great start Jacqui! I don't think I have ever heard this topic so well defined..thanks for that! It is interesting to think of a 'brand' as a trade mark - even if not registered.

I'll be quite upfront here. I actually advise small business owners not to go to the trouble of registering a trademark, for two main reasond:
1. If anyone infrinbges on their trademark, the smaller businesses will not have the finance to fight the issue in court (though I acknowledge that a letter of warning from a solicitor is often all it takes)
2. As small business owners often want to change colour, text or size of their logo (brand) it will cost them to again register the changes. Actually, I know of people who have made changes and did not realise they had to re-register the trademark, which I presume makes the changed logo an invalid trademark.

Would you like to comment?
Barb
Barbara Gabogrecan assists HBB's to market their business online
http://www.HomeBasedBusinessAustralia.org

Barbara is an artist specialising in silk painting; her video is on page one of You Tube http://youtu.be/1ZA9HObN_Go
http://www.SilkPaintingByGabogrecan.com/

Having survived a stroke and a brain tumour, Barbara wrote a book titled 'Thank God I Had a Stroke' to motivate and inspire others suffering from similar afflictions.
http://GabogrecanStrokeRecovery.com/
Barbara Gabogrecan
 
Posts: 341
Joined: Sun May 03, 2009 12:57 pm

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Jacqui Pryor » Mon Apr 16, 2012 2:13 pm

Hi Barbara - thanks for replying to the first thread! It seems you have 'read my mind' on the precise topics that people might want more information about - as both your questions will be covered more fully later this week. For now, I will provide some brief replies to your questions, as a teaser for what's to come later in the week :D

1. If anyone infringes on their trademark, the smaller businesses will not have the finace to fight the issue in court (though I acknowledge that a letter of warning from a solicitor is often all it takes)


Whilst this may be true - what if the smaller business doesn't register and inadvertently infringes someone else's rights? The cost to defend against infringement would be far greater than registering the trademark to begin with; or, worse yet - what would the cost be to any business to rebrand if they found out they were infringing someone else's rights? As noted in the initial post, the first right of trademark registration is the right to use that trademark - which means, you can safely use/promote your trademark for your nominated goods/services and not have to be fearful of someone else bringing action against you.

2. As small business owners often want to change colour, text or size of their logo (brand) that will cost them to again register the changes.


This is a really good point. I have a post coming up that's going to be a few 'tips' to help business owners keep costs to a minimum when it comes to protecting there brands and logos etc. The post will detail the exact issue of changing logo colours and font types etc and will outline exactly how to avoid re-paying costs to register any changes! It is possible to avoid any future costs for these sorts of changes to really keep brand protection costs to a minimum!
Jacqui Pryor is an Australian Trademark Specialist with 13 years experience in trademark matters, and holds a Graduate Certificate in Trade Mark Law & Practice.
Jacqui is also the director of Mark My Words Trademark Services, providing affordable, friendly and reliable services in connection with trademark registration and related matters.
Web: http://mmwtrademarks.com.au/
Email: info@mmwtrademarks.com.au
Blog: http://mmwtrademarks.wordpress.com/
Jacqui Pryor
 
Posts: 11
Joined: Thu Mar 29, 2012 10:06 am

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Barbara Gabogrecan » Mon Apr 16, 2012 5:11 pm

l keep reading with intrest!
Barb
Barbara Gabogrecan assists HBB's to market their business online
http://www.HomeBasedBusinessAustralia.org

Barbara is an artist specialising in silk painting; her video is on page one of You Tube http://youtu.be/1ZA9HObN_Go
http://www.SilkPaintingByGabogrecan.com/

Having survived a stroke and a brain tumour, Barbara wrote a book titled 'Thank God I Had a Stroke' to motivate and inspire others suffering from similar afflictions.
http://GabogrecanStrokeRecovery.com/
Barbara Gabogrecan
 
Posts: 341
Joined: Sun May 03, 2009 12:57 pm

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Jacqui Pryor » Tue Apr 17, 2012 9:59 am

The Advantages of Trademark Registration

Following on from yesterday’s post, I wanted to share 10 benefits of registering trademarks that can’t necessarily be obtained through any other form of registration, such as business name, company name or domain registration.

1. Owning your name/logo and being given the right to use it - it's often assumed that registering a business name or company name give you the right to use the name and this simply isn't correct. In fact, when you register a business name the registration form has a little note that you should ensure your chosen name doesn't infringe a trademark.

2. Own your name/logo forever – there is no maximum life span for a trademark, so long as it remains in use and renewal obligations are met. Trademarks are vulnerable to removal in certain circumstances if they are not used for a period of time; renewal is only due every 10 years (no annual renewal requirements).

3. Making more money for your business through licensing your name/logo. This is often known as a royalty or licensing fee and is usually a flat fee; an amount per unit sold or a percentage of sales.

4. Increasing sale value should you ever wish to sell your business. A registered trademark will hold a higher value than an unregistered name/logo, as you are selling the right to use it without concern that infringement action could be brought against the buyer.

5. Stopping copy-cats from using your name/logo – or names and logos that are too similar to yours. A registered trademark gives you the right to stop not just identical uses but deceptively similar uses of names/logos etc in connection with the goods/services you nominate when registering.

6. Making money after retirement by ongoing licenses to new owners or operators of your business after you retire. If you own a trademark in your own name and sell your business (or retire) you could have a license between yourself and the new owners to see personal income generated.

7. Survive longer in business (studies conducted a few years ago now found that for each registered trademark a business had, it lasted approximately 2.2 years longer than businesses that did not register their trademarks!)

8. Appear dependable and professional to your clients and customers – people see the ® symbol and associate it with a ‘properly registered’ business and one that’s going to be around for a while. Note that you cannot use this symbol unless fully registered - it is an offence to do so.

9. Franchise opportunities – IP, including trademark registration plays an important role when franchising a business. If you wish to 'license' the use of brands to franchisees then they must be registered as trademarks to gain the 'right' to authorise others in this fashion.

10. Get a leg up overseas – registering in Australia allows you to utilise an international registration system by using the Australian trademark as the ‘base’ for the overseas application. This is a simple
way to register overseas versus having to file individual applications to each country of interest.

Tomorrow I will discuss advantages over and above those shown above, specific to the home based and smaller business sectors.
Of course, I welcome any questions or comments and look forward to assisting in any enquiry!

Jacqui Pryor is an Australian Trademark Specialist with 13 years experience in trademark matters, and holds a Graduate Certificate in Trade Mark Law & Practice.
Jacqui is also the director of Mark My Words Trademark Services, providing affordable, friendly and reliable services in connection with trademark registration and related matters.
Web: http://mmwtrademarks.com.au/
Email: info@mmwtrademarks.com.au
Blog: http://mmwtrademarks.wordpress.com/
Jacqui Pryor
 
Posts: 11
Joined: Thu Mar 29, 2012 10:06 am

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Jacqui Pryor » Wed Apr 18, 2012 10:04 am

Advantages of Registering Trademarks for Small and Home Based Businesses

This post will elaborate on the answer I provided to Barbara's question on the thread the other day. A lot of smaller businesses believe that trademark registration is too expensive to be justified and that they don’t need to register because they are so small. Further, the cost involved in having to take someone to court if they do infringe those rights is not viable for smaller business owners.

Whilst one right a trademark has is to take action against infringers, which can be expensive – the first and probably most important right you are granted as a trademark owner is the right to use your trademark for nominated goods/services. So, before we even get to a situation where there is infringing activity, this right means that other trademark owners cannot take infringement action against you! Trademark registration in Australia at the time of writing this would incur a minimum cost of $370.00, spread over two stages ($120.00 initially and $250 at the second stage) and over approximately 7 months – then, there is no more to pay until the mark is due to be renewed each 10 years. So, I actually think it’s small and home based business that can benefit most from registering their trademarks. Even using the services of a trademark company does not need to be expensive. There are many of us out there that provide trademark registration services at reasonable and affordable fees.

Once your rights are in place you shouldn't then come up against action against you for infringement, which would result in you having to defend yourself against the action (costly) or you would be forced to rebrand – also costly. Certainly these two scenarios would be far more expensive than seeking trademark registration to begin with – thousands of dollars as opposed to hundreds of dollars. How much do you spend on business insurance each year? Or, house insurance for that matter? Most likely it’s more than the cost trademark registration incurs over 10 years and your brand is as important a business asset as any physical asset you might insure.

If you were to register a trademark and then find that someone was breaching your rights there are steps to take before having to take them to court that aren’t nearly as costly as court action. I would suggest that in clear infringement cases these earlier steps achieve the desired outcome more than half of the time. Whilst I wouldn't encourage it, you could also choose to take no action against infringing activity, which would therefore cost no money. You could write a letter to an infringing party yourself to save money but I would only ever suggest doing so once you have received advice that confirms there is an infringement of your rights. There are many circumstances prescribed in trademark law that would see the similar use of a name as not infringing, so it's important to be sure of your facts before issuing any letter of demand to someone else.

So, I will often ask my clients (most of who are smaller businesses) can you really afford not to protect your trademarks?
Jacqui Pryor is an Australian Trademark Specialist with 13 years experience in trademark matters, and holds a Graduate Certificate in Trade Mark Law & Practice.
Jacqui is also the director of Mark My Words Trademark Services, providing affordable, friendly and reliable services in connection with trademark registration and related matters.
Web: http://mmwtrademarks.com.au/
Email: info@mmwtrademarks.com.au
Blog: http://mmwtrademarks.wordpress.com/
Jacqui Pryor
 
Posts: 11
Joined: Thu Mar 29, 2012 10:06 am

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Jacqui Pryor » Thu Apr 19, 2012 9:01 am

Tips to keep Trademark Registration costs to a minimum

Earlier this week Barbara replied to a post and included a really good, and common, concern about needing to reregister, and therefore incur additional costs whenever logos or styles of text change etc. Whilst I welcome the opportunity to assist anyone that wishes to register their trademarks and would be more than happy to help, I realise that the cost is prohibitive at times. Each business has their own budgets and not everyone’s allows for engaging professional services, so, I thought I would post a few ‘tips’ to ensure you get the most value for your money when filing your own trademark applications, and to help keep costs as low as possible, including how to avoid further costs due to changes in logo colours and font types.

Tip # 1: Do your homework
Remember, it takes a minimum of 7.5 months to register a trademark in Australia – so, the more homework you do before filing a trademark application the better. Search the trademarks database in Australia; search directories such as the White Pages and the Yellow Pages; search the business and company name registers and use an online search engine. If there are people using the same/similar name to your proposed name in trade but without trademark registration they could be seen as having ‘prior rights’ so you couldn’t stop them using the same name.

Tip # 2: Be aware of where you plan your business to go
If you have intention of using your name/logo outside of Australia, then search in other country’s trademark databases too. A name might be available here, but it might not be in another country and this could have a massive effect on your international plans.

Tip # 3 The goods and services

Trademarks are registered in connection with the goods and/or services they are used to ‘brand’. These must be nominated when you file your application and cannot be expanded upon. Introducing further goods/services after first filing your application means that you have to file a new application to cover those products and services. Ensure you select as many products/services when filing to save time and money in the future.

Tip # 4 Register logos in black & white
In Australia (and this does not apply to all countries) a registered black and white logo will provide the flexibility to use that logo in any colour and still claim registration/protection. If you register in and specify colours you are locked into those colours and would need to file a new application if you were to commence using your logo in another colour.

Tip # 5 Register names in simple text
If you promote your name in a ‘fancy font’, then you should register the trademark in simple text format. This gives you the right to use the name in any fancy fonts. Registering the name alone will allow you to change the style of the font over time if you wish. Registering the mark in your current ‘fancy font’ though will only provide you the right to claim registration/protection when you promote your name in that particular font.
Jacqui Pryor is an Australian Trademark Specialist with 13 years experience in trademark matters, and holds a Graduate Certificate in Trade Mark Law & Practice.
Jacqui is also the director of Mark My Words Trademark Services, providing affordable, friendly and reliable services in connection with trademark registration and related matters.
Web: http://mmwtrademarks.com.au/
Email: info@mmwtrademarks.com.au
Blog: http://mmwtrademarks.wordpress.com/
Jacqui Pryor
 
Posts: 11
Joined: Thu Mar 29, 2012 10:06 am

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Jacqui Pryor » Fri Apr 20, 2012 10:10 am

International Trademark Registration

Trademark registration is a country-by-country process. There is no such thing as a worldwide or global trademark registration. If you export products, or intend to promote your trademark outside of Australia, there are two ways to go about international trademark registration:

1. Filing of separate trademark applications to each and every country of interest. Generally speaking this requires the services of an agent or attorney in the particular country. The application will then need to be examined by that country’s office and ultimately (hopefully) be approved and registered;

2. Filing of a single application through the Madrid Protocol. There are more than 80 countries available through this agreement, and if you already have an Australian trademark and are an Australian national (or operate a business in Australia) you may be eligible to utilise this international system. You file a single application, choose which of the member countries are required and off you go. The international application must be based on an existing ‘live’ Australian trademark – for the same goods/services (or less in scope) and under the same ownership – but, it can prove a much simpler and cost effective way to achieve international protection.

The six-month priority period
The earliest date you file for a particular trademark is known as your ‘priority date’. Australia is member to an international treaty, along with most other countries that allows you to claim this date – for up to 6-months – in your overseas trademark application. This means that if you physically file an international application within 6 months of your Australian application the respective international offices will treat your application as though filed at the same time as your Australian trademark, thus providing you with priority over any other application filed during those 6-months and with a later priority claim than your own. This is a useful period to determine if international registration is required, and, where you require protection.

Available grants and assistance
Austrade has an export marketing grant available to assist persons with the cost of promoting and marketing their products and services outside of Australia. Intellectual Property registration, which includes trademarks, is allowed to form a part of your eligibility to receive the assistance. So long as the expenses of your international trademark protection form a part of a properly written promotional/marketing plan you may be eligible to receive a rebate on costs incurred. The Austrade website has plenty of information available on this grant, and I would encourage anyone that is considering exporting to other countries to familiarize themselves with the requirements to ensure the best chance of receiving financial assistance.
Jacqui Pryor is an Australian Trademark Specialist with 13 years experience in trademark matters, and holds a Graduate Certificate in Trade Mark Law & Practice.
Jacqui is also the director of Mark My Words Trademark Services, providing affordable, friendly and reliable services in connection with trademark registration and related matters.
Web: http://mmwtrademarks.com.au/
Email: info@mmwtrademarks.com.au
Blog: http://mmwtrademarks.wordpress.com/
Jacqui Pryor
 
Posts: 11
Joined: Thu Mar 29, 2012 10:06 am

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Peter O'Connor » Sat Apr 21, 2012 10:46 am

I have been reading your posts with interest Jacqui. I can't believe how much helpful and sensible inforation you are giving. I bet you do well with your business as it is my experience that there are not too many people in your profession who can explain the 'mumbo jummbo' so well!

I have been thinking of trademareing a new business name, but had no idea that it could take so long to process it. Will it go through more quickly if someone like you does it for me, rather than trying to do it myself? I know the Govt is telling us that we can do everything ourselves online now - but can we, really?

I find your Tip 5 is really 'off putting', as with many HBB, we add to our product list/range all the time. To have to re-register everytime we want to add something seems like an enormous task and very time consuming. I know the answer is to plan - but somehow, the very thing that gives HBB a leading edge (their flexibility) seems to be a punishment in the trademarke process.

Tip 4 and 5 were great to hear. I always thought that I would have to re-register a trademark if I changed colours or fonts. But I had no idea I had to do the original registration in both black and white to enable other colour chages. Then to register a plain font allowing me to use whatever font I want, is indeed a great tip. Thanks.

I am sure more people will come to your posts once the word gets out about just how helpful they are.
I really appreciate you giving up your valuable time to share your professional information with me and other HBB.

Pete
Peter O'Connor, is a retired accountant and is involved with teaching home based businesses how to build and manage their own websites.
http://www.HomeBasedBusinessAustralia.org
Peter O'Connor
 
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