Trademark search and application toolkit

Before you proceed with filing an application to register a trademark it is important to be aware of what you need to do to ensure that your application has the best chance of succeeding. It is important to take into account the following steps to optimise your application:

• Use our search tool to conduct searches free of charge to make sure your trademark is available for use and registration
• All applications are subject to scrutiny to make sure the application will be accepted under the current law. Therefore, as part of our pre-filing service, we will advise you
• We ask you to describe your business and what you want to protect with your trademark. We will then allocate the relevant classes and also present a draft of the description of your goods and services so that you can tell us whether we have everything covered
• Once you say it’s good to go, we will file your trademark application and deal with the registry throughout the process

Follow the instructions below on how to most effectively use Trademark Eagle’s search tool.

1. Read our top tips for searching for a trademark
2. Enter your trademark into the search bar on the Trademark search page or into one of the search bars available across the site
3. Choose the region you would like to register your trademark
4. Tick the boxes to select your trademark class(es)
5. Our fast and effective software will search the data from the UK and EU Trademark Registers data. You will then be presented with search results indicating your trademark’s availability or any potential immediate conflicts
6. Decide how you would like to proceed with your trademark
   a) click apply for trademark and complete your trademark application and payment
   b) use the chat box or email us for advice from our experts
   c) search your trademark again for free

Read our top tips on how to effectively search your trademark before filing for application. Our team of experts is always on hand to advise you.

It is also important to check for trademarks which are similar to yours for the same or similar goods or services. In addition, overly descriptive words are not always accepted by the registry, so it is generally wise to ensure that your trade mark is something other than a straightforward description of your product or service, see our “Top Tips: naming your trademark”. The more distinctive your trademark, the more likely it is to be accepted – and the less chance there is of a third party attempting to adopt something similar.

For an effective search we additionally advise that you search for separate words in your trademark individually, and also search for any phonetic matches (TMs that sound the same but are spelled differently).

Example – Trade mark: “POLAR KNIGHTS”

1. Search for the identical trademark – “POLAR KNIGHTS”
2. Break up the mark to search for each individual word – “POLAR” and “KNIGHTS”
3. Search for plurals and singular spellings– so “POLAR KNIGHT”, “POLARS KNIGHT”, “POLARS KNIGHTS”, “POLARS”, “KNIGHT”
4. Search for phonetic equivalents – “POLLAR”, “POLER” and “NIGHTS”, “NITZE”

Trademark Eagle recommend that you search through our officially supplied databases as thoroughly as you can as a starting point. A careful trademark search will help you to avoid the significant legal costs of objections, and our experts are on hand to help you through the trademark searching process. We can support you during working hours with our online chat service, or if you prefer you can send us an email and we will reply to you.

Please note however that no database can conclusively guarantee the absence of conflicting trademarks. For more extensive, specialist advice, Trademark Eagle offer an expert trademark review, and this valuable service is included in the filing fees for UK and EU trademark applications.

1. Choose a name that doesn’t describe your products. Words that are commonly used in your industry cannot be protected without extra distinctive words or letters
2. Made up words often make good trademarks and are easier to maintain. As an example –say the goods you want to protect are kits for making toy pets – you could create words that give a flavour of the products such as CREAPET, or KITAPET as examples
3. Don’t copy someone else’s trademarks and avoid a name that is too close to an existing mark
4. Don’t share your ideas about a trademark before you have secured rights in it
5. Use non-disclosure agreements when you are discussing your business ideas with third parties
6. Check out domain and company names before proceeding with your trademark. Also secure your domain and company names so that you are able to use these when you need them
7. Where possible, allow time for your trademark to be registered before you need to use it. Rights in a trademark come from its filing date, but it takes around 6 months for a trouble-free UK trademark to be processed and 6-8 months for an EU application
8. Think where you want to use your trademark and let us know so that we can advise on the best strategy for protecting your rights in multiple jurisdictions.

The expert trademark review, which is included as part of Trademark Eagle’s registration package, will provide you with valuable information including:

Details of results and analysis

We will provide you with details of identical and similar marks. We’ll let you know who their owners are, and whether or not they would be informed of your own application by the trademarks registry.

Legal examination advice

We will give you our expert opinion on whether your proposed trademark meets the necessary criteria to function as a trademark and be accepted by the trademark registry. In addition, we will advise you whether third party trademark registrations or applications may impact upon your trademark, and how this may affect the commercial use of it. As appropriate, we will give you advice on how to improve chances of a successful registration.

Application advice

We will provide advice on whether you should proceed with filing an application, and whether we can offer our guarantee for your trademark application. This advice is extremely valuable and could save you from wasting hundreds of pounds in application fees for a trademark that may not succeed.

Our on-going commitment

Once you have decided to file an application, we will provide you with a description of the goods and services appropriate for your business, ensuring your trademark application is correctly classified. As part of our on-going commitment to ensure the best outcome for your trademark application, we will also provide you with additional goods and services which might be appropriate to future expansion of your business. We will discuss with you who should own the trademark, and which jurisdiction is most appropriate for your business.

Trademark Eagle provides specialist trademark advice in order to assess the likely success of an application to register your trademark. Our Expert Trademark Review costs £120.00 + VAT for the UK, and £195 + VAT for the EU. This Review is built into the prices of our UK and EU Trademark Applications.

If you are unsure whether to commit to full registration costs, you can purchase the expert trademark review for the UK or EU trademark. We recommend this service when you are not sure if a mark is clear for usage or when you have multiple names to choose from.

Should you decide to proceed with applying for the trademark following an expert trademark review, we will take the costs of the expert trademark review off the price of your trademark application fee (£120 for a UK search and £195 for an EU search excl. VAT).

Contact us to find out more.

1. In short, our trademark watching service will:
   • Keep you informed of any attempts to register the same or similar trademarks to your own
   • Help you to assert your trademark rights
   • Ensure your brand remains untarnished and secure
   • For many brand owners, registering a trademark is just the beginning of a strategy for protecting their brands

   In order to maintain the value and protection for your brand, it is essential to ensure that you are aware of any third parties attempting to obtain the same or similar trademarks to your own. As the trademark registrars will accept matching trademarks without objection, it is necessary for brand owners to police the register and to defend and enforce their rights. Many companies devise strategies to monitor and respond to the imitation and unauthorised use of their registered trademarks.

   In order to best protect your trademark, Trademark Eagle strongly recommend you subscribe to a name watching service. Our trademark watching service will keep you informed of applicants attempting to register highly similar or identical trademarks to your own, either worldwide (in more than 200 countries), or on a regional/national basis. We can then assist you through the process of objecting and, where possible, advise you on the merits of taking further action in the country or countries involved.

   Prices vary depending on jurisdiction and client requirements, so, to find out more please call us on 01223 208 624.