People are asking us, “WHY BOTHER? I’ve been using the mark for years. Why register it now?” Here are some of the reasons for applying to register:
It is an asset and so should be protected
Your trade mark may be the most valuable asset in your business! If I could appropriate your trade mark, how much business would I get from the goodwill you have built around your trade mark over the years you have been using it? If you could use KODAK you would sell a lot of cameras because of the goodwill associated with that mark. So too with your trade mark, although probably on a lesser scale! So point 1 – your trade mark is an asset – it has value – it can generate sales. What do you do with your other assets? You try to protect them as much as possible – fire extinguisher systems for your buildings and stock, locks on the doors, insurance, etc. So it does not make sense once you have realised that your trade mark is an asset not to secure it as much as possible.
It will act as a warning to other traders
Everyday persons wishing to adopt new trade marks are asking us and other trade mark attorneys to search to see if the mark they have in mind is already appropriated and therefore unavailable for use by them. The only search which is cost-effective for any trade mark attorney to conduct is a search of trade marks on the Patent Office register. If your mark is not there and if one of those searches is for a mark the same as, or similar to, your mark, an all-clear result is likely to be given. Now you have a competitor unwittingly about to transgress into an area you regard as your own. He starts with a national advertising campaign on TV. You object. He says, “I’ve got too much at stake to stop now. The TV advertising alone cost $100,000. If you want to stop me issue a Court proceeding and we’ll see who has the most money to litigate.” So you are propelled into litigation at a starting cost of, say, $40,000 (cash up front, please). And you could have avoided all of this hassle by registering your trade mark.
It can give you protection for a future use
Imagine that a competitor started using a mark very close to yours and you want to stop him. You were always going to use your mark on water tanks and that is what your competitor is using it on. Up until now you have only used your mark on corrugated iron roofing. You are stunned when we tell you that you probably will not be successful in stopping your competitor – but you would easily have been able to do so if you had applied to register your trade mark for water tanks when you first formed the intention to use it on that product.You can quickly, easily and more cheaply prove your rights by producing a certificate of registration for the trade mark.
Perhaps you are lucky and your competitor is using the mark on fibreglass roofing. So we tell you you might be able to succeed in a legal proceeding for “passing off”. First of all, you will need to establish the reputation or recognition there is in your trade mark. So we ask you to line up your witnesses and we anticipate that will take about 2 days of court sitting time. To prove reputation will cost you from $25,000 upwards. Of course, you could have avoided that cost if you had registered your trade mark, because all you would have had to have done was to produce your certificate of registration to the Court to prove the protection your trade mark was entitled to.
It makes your business more saleable and secure
Now you want me to buy your business. I am satisfied with the registered valuations of your land and my accountant has appraised the value of your business but, hey, your trade marks are not registered! How can I enforce them? I don’t want to be in for situations like I’ve outlined above. So I’ll have to do the work myself – if it is not too late. So I discount the price I offer you by $200,000 to take account of the risks involved with your unregistered trade marks. Sad, isn’t it?
