5 reasons not to file a trademark

Here are five reasons not to file a trade mark, in no particular order:

1 – your business is only ever going to be confined to a subset of a country (and not extend to the whole country);

2 – you can’t afford it just yet;

3 – you don’t actually care if people use your brand without your permission (there are business models where this makes sense);

4 – you have no real brand, you rely on a descriptive moniker which attracts volume based sales, not brand loyalty;

5 – the product or service is still confidential and you don’t want competitors to be able to get an insight into it by monitoring the trade mark databases.

What would you add?

(Photo credit: mag3737)

20 Comments on “5 reasons not to file a trademark

  1. I would want others to do marketing for my mark and later i will see them in the Court ! 

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  2. I would want others to do marketing for my mark and later i will see them in the Court ! 

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  3. How about because you don’t actually trade in anything?  But this isn’t a fashionable position: governments, armed forces, police, intellectual property offices, all are amassing huge and (I think) inappropriate and unnecessary trade mark portfolios.

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  4. How about because you don’t actually trade in anything?  But this isn’t a fashionable position: governments, armed forces, police, intellectual property offices, all are amassing huge and (I think) inappropriate and unnecessary trade mark portfolios.

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  5. That’s great Peter.  How enforceable do you think these trade marks would be?  Is their use acceptable to avoid a non-use revocation claim?  ie – if it is not in commerce?

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  6. That’s great Peter.  How enforceable do you think these trade marks would be?  Is their use acceptable to avoid a non-use revocation claim?  ie – if it is not in commerce?

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  7. Nice idea, Vikram.  You’d have to be very careful that you didn’t allow them to dilute your mark in away that damages your ability to enforce it.  You’d also have to be careful that you were using it to comply with the ‘use it or lose it’ provisions in what ever countries you’re operating in…

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  8. Nice idea, Vikram.  You’d have to be very careful that you didn’t allow them to dilute your mark in away that damages your ability to enforce it.  You’d also have to be careful that you were using it to comply with the ‘use it or lose it’ provisions in what ever countries you’re operating in…

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  9. Duncan, I am thinking of applications so wide that there can never have been the slightest intention of using them in commerce or otherwise eg “Royal Marine Commando” – a Community trade mark – for cosmetics. I am interested in whether this is a British phenomenon or is more widespread. Whether some of these trade marks are “used” for the purpose of our law is moot, I think, but if the law said “used in commerce” I think they would be invalid or revocable, at least in respect of many of the goods or services.  There should be no need to register a trade mark – and therefore no way to register one – if you aren’t using it in commerce.It calls the trade mark system into disrepute and panders to the absolutists!

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  10. Duncan, I am thinking of applications so wide that there can never have been the slightest intention of using them in commerce or otherwise eg “Royal Marine Commando” – a Community trade mark – for cosmetics. I am interested in whether this is a British phenomenon or is more widespread. Whether some of these trade marks are “used” for the purpose of our law is moot, I think, but if the law said “used in commerce” I think they would be invalid or revocable, at least in respect of many of the goods or services.  There should be no need to register a trade mark – and therefore no way to register one – if you aren’t using it in commerce.It calls the trade mark system into disrepute and panders to the absolutists!

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  11. Hi PeterIt’s not just a British phenomenon.  Try searching ‘government‘ as a text element of the trade mark owner at the USPTO.  (May work if you just click the above link.)  A lot of countries governments are represented there.  (Though not all are in the context you suggest – where there would be no commercial use.)  Having said that, I can think of a lot of ways that the Royal Commando Mark could be used by government.  It is definitely a very well recognised brand, afterall.Clearly, though, they are trying to stop others from using / diluting it and they want to add trade mark infringement to the competition law (and possibly criminal) sanctions they can bring to bear.For those who are interested, here’s a list of some of the UK Government Proprietors of UK Trade Marks:The Secretary of State acting through O     Romsey Road, Maybush, Southampton, SO16 4GU     0832784001The Secretary of State, Department of T     1 Victoria Street, London, SW1H 0ET     0922470001The Secretary of State for Business, En     1 Victoria Street, London, SW1H 0ET     0923199001The Secretary of State for Children, Sc     Sanctuary Buildings, Great Smith Street, London,     0917282001The Secretary of State for Communities     The Fire Service College, London Road, Moreton-in     0935008001The Secretary of State for Culture, Med     2-4 Cockspur Street, London, SW1Y 5DH     0705695001The Secretary of State for Culture, Med     2-4 Cockspur Street, London, SW1Y 5DH     0942920001The Secretary of State for Defence     DSTL Porton Down, Sailsbury, Wiltshire, SP4 0JQ     0949412001The Secretary of State for Defence In H     Kingdom of Great Britain and Northern Ireland,, a     0881002001The Secretary of State for Defence in H     Kingdom of Great Britain and Northern Ireland, Wh     0893870001The Secretary of State for Defence, Uni     Dstl Porton Down, Salisbury, Wiltshire, SP4 0JQ     0801469001The Secretary of State for Defence, Uni     Defence Evaluation and Research Agency, Ively Roa     0814302001The Secretary of State for Defence, Uni     Whitehall, London, SW1A 2HB     0815140001The Secretary of State for Defence, Uni     Whitehall, London, SW1A 2HB     0915357001The Secretary of State for Defence, Uni     Dsil Porton Down, Salisbury, Wiltshire, SP4 0JQ     0933400001Secretary of State for Education and Sk     Moorfoot, Sheffield, South Yorkshire, S1 4PQ     0657121001The Secretary of State for Environment,     Building Research Establishment, Garston, Watford     0298233001The Secretary of State for Environment,     Nobel House, 17 Smith Square, London, SW1P 3JR     0824676001The Secretary of State for Environment,     Environment, Fisheries and Aquaculture Science, L     0830155001The Secretary of State for Environment,     Laboratories Agency, New Haw, Addlestone, Surrey,     0899815001

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  12. Hi PeterIt’s not just a British phenomenon.  Try searching ‘government‘ as a text element of the trade mark owner at the USPTO.  (May work if you just click the above link.)  A lot of countries governments are represented there.  (Though not all are in the context you suggest – where there would be no commercial use.)  Having said that, I can think of a lot of ways that the Royal Commando Mark could be used by government.  It is definitely a very well recognised brand, afterall.Clearly, though, they are trying to stop others from using / diluting it and they want to add trade mark infringement to the competition law (and possibly criminal) sanctions they can bring to bear.For those who are interested, here’s a list of some of the UK Government Proprietors of UK Trade Marks:The Secretary of State acting through O     Romsey Road, Maybush, Southampton, SO16 4GU     0832784001The Secretary of State, Department of T     1 Victoria Street, London, SW1H 0ET     0922470001The Secretary of State for Business, En     1 Victoria Street, London, SW1H 0ET     0923199001The Secretary of State for Children, Sc     Sanctuary Buildings, Great Smith Street, London,     0917282001The Secretary of State for Communities     The Fire Service College, London Road, Moreton-in     0935008001The Secretary of State for Culture, Med     2-4 Cockspur Street, London, SW1Y 5DH     0705695001The Secretary of State for Culture, Med     2-4 Cockspur Street, London, SW1Y 5DH     0942920001The Secretary of State for Defence     DSTL Porton Down, Sailsbury, Wiltshire, SP4 0JQ     0949412001The Secretary of State for Defence In H     Kingdom of Great Britain and Northern Ireland,, a     0881002001The Secretary of State for Defence in H     Kingdom of Great Britain and Northern Ireland, Wh     0893870001The Secretary of State for Defence, Uni     Dstl Porton Down, Salisbury, Wiltshire, SP4 0JQ     0801469001The Secretary of State for Defence, Uni     Defence Evaluation and Research Agency, Ively Roa     0814302001The Secretary of State for Defence, Uni     Whitehall, London, SW1A 2HB     0815140001The Secretary of State for Defence, Uni     Whitehall, London, SW1A 2HB     0915357001The Secretary of State for Defence, Uni     Dsil Porton Down, Salisbury, Wiltshire, SP4 0JQ     0933400001Secretary of State for Education and Sk     Moorfoot, Sheffield, South Yorkshire, S1 4PQ     0657121001The Secretary of State for Environment,     Building Research Establishment, Garston, Watford     0298233001The Secretary of State for Environment,     Nobel House, 17 Smith Square, London, SW1P 3JR     0824676001The Secretary of State for Environment,     Environment, Fisheries and Aquaculture Science, L     0830155001The Secretary of State for Environment,     Laboratories Agency, New Haw, Addlestone, Surrey,     0899815001

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  13. Hi Duncan! Are you at INTA? If so let’s continue this over coffee … With Santosh Vikram Singh too perhaps! We had dinner together yesterday and out Blackberries were buzzing simultaneously with updates from your blog.  Royal Marine Commando is a good trade mark for security services, warfare manuals, weapons, etc but take a look at the CTM specification and despair.  Indeed, think of the ramifications of it being a CTM not just a UK national. I wonder how that plays in the Republic of Ireland?Patent Office is a designation with statutory protection in the UK (and so is Trade Marks Registry and Designs Registry).  By taking up Mr Gowers’s ridiculous idea, what is now the Intellectual Property Office has to fall back on trade mark protection.  The Commandos, the Metropolitan Police and all the other emanations of the state that are wasting taxpayers’ money on specious trade marks should be protected by statute too – that, it seems to me, is the right way to do what needs to be done.

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  14. Hi Duncan! Are you at INTA? If so let’s continue this over coffee … With Santosh Vikram Singh too perhaps! We had dinner together yesterday and out Blackberries were buzzing simultaneously with updates from your blog.  Royal Marine Commando is a good trade mark for security services, warfare manuals, weapons, etc but take a look at the CTM specification and despair.  Indeed, think of the ramifications of it being a CTM not just a UK national. I wonder how that plays in the Republic of Ireland?Patent Office is a designation with statutory protection in the UK (and so is Trade Marks Registry and Designs Registry).  By taking up Mr Gowers’s ridiculous idea, what is now the Intellectual Property Office has to fall back on trade mark protection.  The Commandos, the Metropolitan Police and all the other emanations of the state that are wasting taxpayers’ money on specious trade marks should be protected by statute too – that, it seems to me, is the right way to do what needs to be done.

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  15. Thanks Peter, just sent an email in relation to the INTA suggestion.  I agree – legislation is a better way for governments to protect this stuff.

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  16. Thanks Peter, just sent an email in relation to the INTA suggestion.  I agree – legislation is a better way for governments to protect this stuff.

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  17. I agree with ##2-4, but disagree with #1. Even if you only trade in a “subset of a country”, it is still potentially worth filing a trade mark if: 1. You want to be able to stop others using that name (whether within the same “subset” or otherwise) more easily than with a passing off claim or equivalent.2. You want to mitigate the risk of someone else registering your name as a trade mark and using it to restrict your ability to develop your business further.

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  18. I agree with ##2-4, but disagree with #1. Even if you only trade in a “subset of a country”, it is still potentially worth filing a trade mark if: 1. You want to be able to stop others using that name (whether within the same “subset” or otherwise) more easily than with a passing off claim or equivalent.2. You want to mitigate the risk of someone else registering your name as a trade mark and using it to restrict your ability to develop your business further.

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  19. Great comments, John.  Totally agree, that if you have the funds, then always err on the side of filing a trade mark.  

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  20. Great comments, John.  Totally agree, that if you have the funds, then always err on the side of filing a trade mark.  

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