Registering a trademark: What should be clarified before applying
A good name is the start. The protected area, previous rights and the list of goods determine the registration strategy.
Start with the business model
Before you register a name or logo, describe what your company offers under this logo and in which markets it should operate. A software product, a consulting service and an online shop can have different protection requirements. The question of whether the name, the graphic logo, or both should be protected is also a start.
A brand must be able to fulfill its role of origin and must not fail due to legal barriers to protection. Purely descriptive information can therefore be problematic. A free domain or an available social media name does not replace this check. The brand strategy should also specify who should become the owner and how the logo will be used in the company.
Research older rights in advance
During the registration process, the DPMA does not check whether older identical or similar trademarks conflict. This test is therefore part of preparation. It should go beyond a search for exactly the same spelling: Depending on the case, similarities in sound, image or terminology may also be relevant.
For Germany, in addition to German brands, EU trademarks and internationally registered trademarks with corresponding protective effects must also be considered. Other older license plates may also be affected. A registry search provides clues; the legal evaluation must look at the signs found and the respective goods or services together. Even after registration, it remains useful to observe new conflicting signs.
Consciously formulate the list of goods
Trademarks are registered for specific goods and services. The associated list is therefore an essential part of the application. The Nice Classification assigns these services to different classes. However, the decisive factor is which specific terms are in the application and whether they adequately represent the business model.
After registration, the list with the DPMA can be restricted but not expanded. Therefore, include realistic next development steps. For example, describe in detail whether you provide, develop, sell, or provide training on software. The uniform classification database helps with accepted formulations; the selection should still fit your actual plans.
Combine research, registration and support
To prepare for a lawyer, the planned signs, an understandable description of your offers, relevant countries and known competitors are sufficient. Add domains and publications that you have already used. From this, the scope of research, a suitable trademark form and the area of protection can be developed.
A meaningful order does not necessarily end with the submission of the application. It may also include processing official inquiries and classifying third-party objections. Which services will be covered should be determined in advance. The application is a step in establishing an intellectual property right; it neither replaces the conflict check nor the subsequent maintenance and defense of the trademark.
Sources & further information
- DPMA — trademark protection and protectability ↗
- DPMA — Trademark search and previous rights ↗
- DPMA — goods and services ↗
- DPMA — trademark application ↗
This article provides general guidance. The options available depend on your specific situation.