Don’t pour cold water on your trademark application

If you've recently emigrated to Antarctica or have just emerged from a summer hibernation, you’ll be forgiven for not having heard about the Ice Bucket Challenge.

As for the rest of us, the ALS Association's (ALSA) charity fundraising challenge has been here, there and everywhere. ALSA raised more than £60 million from the craze, which saw celebrities, athletes and your family and friends post videos of themselves getting a good soaking to raise awareness of ALS - known as motor neurone disease in the UK.

However, when ALSA filed an application in the US to trademark phrases such as 'ice bucket challenge' and 'ALS ice bucket challenge', there was a rather public backlash. Two days later, the charity was forced to cancel its attempts to legally own the terms.

While you're unlikely to face the kind of challenges that ALSA came up against when applying for its trademark, it pays to know the rules before you submit yours.

What you need to know before you apply

There are a number of things to consider before you submit your application to the Intellectual Property Office (IPO):

Acceptable trademarks

You must make sure that your proposed trademark meets the IPO’s requirements. The IPO will not accept trademarks that:

  • contain descriptions of your goods and services
  • are not distinctive
  • include protected emblems
  • contain three-dimensional shapes
  • could cause offense.

Registering with Companies House

To apply for a trademark you must have a company name registered with Companies House. However, a registered company name may not be accepted if:

  • it is not distinctive
  • it is a descriptive word
  • it is registered in another person’s name
  • it indicates geographical origin.

Trademark classes

You will need to list the goods and services you plan to use your trademark for. These are divided into classes. Find information about the classes of goods and services at the IPO website (opens in a new window).

Costs

Submitting an online application for one class of goods or services costs £170. Paper applications are slightly more expensive at £200. If you want to apply for more than one class, it will cost an extra £50 per class.

Get in touch

Taylor Edward accountants and business advisers have years of experience in the field.

Contact us on 01753 892 815 or email info@tayloredward.com for help applying for a trademark.