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Benefits of Trademark?

Discussion in 'General Domain Discussion' started by ttfan, Feb 14, 2018.

  1. ttfan

    ttfan Membership: Community

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    auDA Member:
    Yes
    Say I run an online shop in the very niche area selling Fidget Spinners, and I operate under the name SME Fidget Spinner Shop (SME stands for Subject Matter Expert). Say we sell a variety of brands of fidget spinners off the shelve, but our expertise is in create our own combination of components to make a Fidget spinner, suited to the customer's requirements. Say we are subject matter experts in this area, and most people just refer to us as "SME" Fidget Spinners when talking about customised ones. My Question:
    1. Is there a benefit in registering a trademark for "SME", in the area of retail and services of Fidget Spinners?
    2. Is there any SEO benefit in owning such a trademark?
    PS I didn't really want to disclose our trading name publicly, at the risk of someone else registering the name (I know some of you know anyway). :)
     
  2. Shane

    Shane Membership: VIP

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    auDA Member:
    Yes
    1. Yes - but I think it would need to be a composite mark (i.e. registered as part of a logo). If it's an acronym I doubt it will be accepted as a word mark.
    2. No.
     
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  3. Horshack

    Horshack Membership: Community

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    Is it worth the expense?
     
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  4. DomainNames

    DomainNames Membership: Community

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    Good questions for a board sponsor Cooper Mills Lawyers who are experts in this area. Message them maybe if you are really looking at trademarks etc
     
  5. Cooper Mills DomainLawyer

    Cooper Mills DomainLawyer Membership: VIP

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    auDA Member:
    Yes
    Trademark protection is important (and often overlooked), it is a little hard to advise on your particular situation until I know a little more, but happy to discuss by PM.
    In the meantime our coopermills blog has some good TM articles. In terms of question 2, you will need to ask an SEO expert about this but a trademark will enable you to shut down competitors using your brand name in an adwords campaign if you have a registered trademark.
     
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  6. ttfan

    ttfan Membership: Community

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    auDA Member:
    Yes
    Well it's only of the order of hundreds of $.
    Thank you Cooper Mills DomainLawyer, I've sent you a PM (or 'conversation as they seem to call it here).
     
  7. DnEbook

    DnEbook Membership: VIP

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    For ten years protection it is worth it, especially if you making this your main form of income
     
  8. ttfan

    ttfan Membership: Community

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    auDA Member:
    Yes
    Yes it seems like it, but I can't quite see how a competitor would use my brand against me, since my products are not actually SME brand., they are a combination of generic brands that others sell too... it's our expertise and advice in combining the products that sets us apart.
     
  9. DnEbook

    DnEbook Membership: VIP

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    LOL ....consider rebranding to something that has "expert" in the title and then trademark!
     
  10. Nicole Murdoch

    Nicole Murdoch Membership: Community

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    snoopy and eBranding.com.au like this.
  11. findtim

    findtim Membership: VIP

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    auDA Member:
    Yes
    as my kids would say today "what's a fidget spinner" ? as " wasn't that like, soooo, last month !!! "

    tim
     
  12. snoopy

    snoopy Membership: VIP

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    Would only do it if it is as others have stated "your main source of income".

    If it is a smallish shop then it is probably not worth the hassle/expense, just add TM on logos, labels etc and don't worry about registering. There will also be ongoing renewal fees and legal fees with maintaining it.
     
  13. findtim

    findtim Membership: VIP

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    auDA Member:
    Yes
    there's a lot to consider and the main point is a trademark only helps when you employ a lawyer, IPaustralia do nothing other then take your money.
    tim
     
  14. Nicole Murdoch

    Nicole Murdoch Membership: Community

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    Are you trying to start something here Tim?
     
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  15. ttfan

    ttfan Membership: Community

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    auDA Member:
    Yes
    I would guess that's technically not legal, although I guess your point is that no one is going to care?

    I still can't make up my mind if it's worthwhile...because as I mentioned before, I can't quite see how a competitor would use my 'brand' against me, since my products are not actually SME brand.... instead they are a combination of existing brands (all from overseas) that a few others in AU sell too... it's our expertise and advice in combining & assembling the products that sets us apart.
     
  16. snoopy

    snoopy Membership: VIP

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    It is completely legal to use TM, it means you are claiming a trademark but it isn't registered,

    "You can produce a trade mark and use it to promote your goods and services without registering it. You can even add a TM (for trade mark) to your product labels. This is not illegal but such trade marks have no registered, intellectual property (IP) protection.

    Only registered trade marks can carry the ® symbol. Once your trade mark is registered, placing the ® symbol immediately next to your brand puts others on notice to respect your trade mark."

    https://www.ipaustralia.gov.au/trade-marks/understanding-trade-marks/benefits-trade-marks

    I think it is probably a good option for you if you aren't sure whether you need one.
     
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  17. Nicole Murdoch

    Nicole Murdoch Membership: Community

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    A trade mark is good to have. Think of this scenario. You start a business in, say Sydney under a name. Say someone sees you that very day and starts the same business in Perth under the same name. Without a trade mark, you would need to rely on misleading and deceptive conduct to get them to stop using that name. But what if they don't use it in a misleading or deceptive way? Or what if you don't have enough reputation in the industry such that misleading and deceptive conduct can even occur? However, if you had a trade mark, you would not need to prove you had a reputation in Perth, you would not need to prove they used it in a misleading and deceptive way (you just have to prove the test for trade mark infringement and that there is no defence that applies). In that situation, a trade mark is very very handy.

    It is also much cheaper to run TM cases than it is misleading and deceptive conduct cases.

    I think the cost of a registered trade mark is $250 per class. If that is the only cost that applies then it is not much of an investment to give you the peace of mind and a possible action where you might have none.

    ttfan - can I presume you are using the first letter of a number of brands for your mark? For example are you using a trade mark like BCF - where it is short for Boating Camping Fishing (but in this scenario pretend those words are brands)? If so, have you considered a slightly stylised mark to give yourself a better chance of registration?

    You say that other traders would not want to use the brand against you. The point of brands are that when they are young no-one but the owner would want to use them - but when they become popular others try to adopt the mark to benefit from the reputation. Look at Apple. No-one would have wanted to use the mark for computers without Apple doing it first. The point is to stop those who have no legitimate right to use the mark, from using the mark.
     
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  18. ttfan

    ttfan Membership: Community

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    auDA Member:
    Yes
    Thanks for the info snoopy & Nicole, much appreciated!

    Nicole: No, my acronym is generic, just like SME in the example above (which stands for Subject Matter Expert). So the same acronym could be used in other industries (which is not a problem for me), but in the community of my industry, everyone knows us by this acronym.
     
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  19. Nicole Murdoch

    Nicole Murdoch Membership: Community

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    You are welcome and - that sounds like a trade mark to me. A trade mark is a sign that designates a source of origin.

    The problem is that if it is generic you will have to convince IP Australia that when people hear the letters they think of you. Thus, it might cost some money and effort to get registered.
     
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