Trade Marks: What They Are, Why They Matter, and How to Get Started (Painlessly)
This blog has come about due to this being one of my most often asked questions. Really, if I had a pound for every time someone asked me how to get started with trade marks, I’d be super wealthy!
Before we get started, a quick but important note: I am a qualified trade mark paralegal (as well as a Virtual Strategic Executive Assistant and ex corporate Senior EA leading a VA team) and I also work alongside trade mark attorneys on a freelance basis. BUT I am not permitted to give legal advice. I am here to guide you through the options, but please remember that specific legal counsel should always come from a qualified trade mark attorney, IP lawyer, or solicitor trained in this area.
So, let’s get started.
Why You Should Care About Trade Marks
Investing in strong brand assets and investing in proper IP protection sit in the same bracket. Both are foundations of your business, not "optional extras." Just as you invest time and effort into launching a website or creating professional branding, I highly recommend you invest time in considering how to protect the name and identity that makes your brand unique.
Before I invested in my branding (my designer is https://joannehiggs.co.uk and I highly recommend her), I made sure I secured my trade mark registration. I wanted the peace of mind that my chosen business name and the branding that I was about to invest in was protected.
This guide aims to do two things:
Show you how UK trade mark registration works (procedurally speaking);
Helps you decide on your preferred route: the DIY process with the UKIPO (the UK Intellectual Property Office) or seeking professional advice from a qualified attorney or solicitor (and why that really matters).
I use my own trade mark registration IZZWHIZZ VA as an example throughout. I am based in the UK and my services are provided in the UK only so I am using the UK trade mark process as my example. If you are based outside of the UK, and/or if you want to extend your protection beyond the UK, additional information is needed to help you do this.
What is a Trade Mark?
To keep it simple, the UKIPO defines a trade mark as a sign that can distinguish your goods and services from those of your competitors. Think of it as your brand's unique signature, it could be a name, a logo, or even a specific sound or colour that tells the world, "This is who we are’ and it instantly makes you recognised and different from your competitors. To be registrable as a trade mark, it must be distinctive and not descriptive of the goods or services that will be protected by it.
Most businesses start by protecting the name itself as a word mark. That means registering just the words and not the logo design. For example, I registered IZZWHIZZ VA as a word mark. I haven’t yet registered the logo designs that Jo created for us.
Do I Need a Trade Mark?
If you have been running your brand for a few years and haven't registered a trade mark yet - don't panic. Take this as your cue to learn a bit more and decide if you need to take action. You are definitely not alone in this, and it’s never too late to start. It’s better to start sooner rather than later to avoid the risk of a rebrand later on if you find that a company is already using the mark you have chosen.
A registered trade mark acts as a good deterrent to third parties and can help reduce the likelihood of other companies adopting a similar mark in similar goods or services. This can lead to consumers confusing your brand with someone else’s which is what we do not want as business owners. It can be much more difficult to rely on unregistered rights against a third party than to enforce your rights as the owner of a registered trade mark.
It’s also a valuable asset that can be used in licensing, and if you could even sell it to a third party if one day it is no longer of commercial interest to you.
The Big Myth: "I Registered My Company Name, So I’m Protected"
I hear this all the time: "I’ve registered my domain name and my company name at Companies House, so my brand is safe, right?"
Not quite. Registering a domain name just secures your online address. Registering at Companies House is an entirely different process. Neither being registered at Companies House or owning the domain name provides the legal protection of a trade mark. Only a registered trade mark gives you the exclusive right to use that name within your industry, allowing you to stop others from using it or something confusingly similar.
How do I get a trade mark?
There are two routes you can take:
The DIY Route: You can file directly through the UKIPO. There is absolutely nothing wrong with this, and many people successfully file their own trade marks.
The Professional Route: You use the services of a qualified professional. I strongly advise this if your budget allows for it. A qualified expert does far more than just "file a form."
Things to do before you file:
Make sure your mark has the best chance of being accepted by the UKIPO: this is where the advice of a trade mark attorney is invaluable to make sure the brand you have chosen will meet the UKIPO criteria which you can read about here: https://www.gov.uk/how-to-register-a-trade-mark/what-you-can-register.
The Clearance Search: Don’t rely on a quick internet search alone for your chosen name. Trained professionals are skilled in thorough clearance searches: they check for identical marks, phonetically similar names, and marks in related goods or services. If you’re using the UKIPO DIY process, use the UKIPO search tool to check if anyone has already registered your name (or something very similar) in your specific industry. You will also need to run internet searches, domain name searches and Companies House searches.
Note: If you find a similar or identical mark, don’t immediately assume you cannot register yours. If the mark is in a completely different sector, you may be able to coexist on the register. However, assessing the "likelihood of confusion" is complex, and this is where professional advice is invaluable.
Get your "Classes" right: Trade marks are registered in different "classes" (the categories of goods and services). Think of it as labelling your business so the trade mark system knows where you fit in. Start here to understand which goods or services you will need for your business: UKIPO Search UK trade mark classes service. If you’re still not sure, you can email the IPO Classification Team directly for help.
A note on the use of your mark: In the UK, after 5 years, third parties can object to your mark if it has not been put to "genuine use." Make sure you keep a log of the mark in use (e.g., on your website, marketing materials, product labels, letterheads). Be specific with your class description - cover what you do, but don't "over-egg" the list with items you don't intend to provide, as this can be perceived as non-use in the future.
Do your prep work: Make sure your form is accurate (check the actual mark you are applying for is spelled correctly (you can’t change it later!, ensure your address is correct, and ensure all details required in the form are completed). The UKIPO provides a helpful guide here: Process for applying to register for a trade mark.
Double-check your details: Accuracy is key. Before hitting submit, check every detail. You may also want to investigate the UKIPO Right Start Service which allows you to have your application pre-examined for compliance before it is formally processed, offering extra peace of mind. The UKIPO are very knowledgeable and helpful so if you are not sure about any aspect of your application, pick up the phone and call their Customer Service line - they are there to help you.
What happens during the trade mark application process?
Once you have submitted your application, you will receive a filing receipt and your application will be assessed against the UKIPO criteria for suitability by a UKIPO examiner. You can find a full timeline here at the UKIPO: https://www.gov.uk/how-to-register-a-trade-mark/what-you-can-register. The whole process usually takes between 4-6 months. If it is straightforward it will go through quickly. If it is opposed by a third party, this will inevitably cause delays. Most marks don’t get opposed - please don’t quote me on this but I believe that in the UK around 5% of mark applications are opposed so it is quite a small number. Hiring a trade mark attorney will reduce your chances of being opposed and, if you are opposed, you will have the right person in your corner to handle it.
What happens after my trade mark is registered?
Once registered, you can use the ® symbol after your trade mark showing the world that it is a registered trade mark. Only use this symbol once the trade mark is officially registered as using it before registration is not legal and can be misleading. For UK registrations, the trade mark will last for 10 years from the application filing date. After 5 years, your trade mark can become vulnerable to cancellation by third parties through non use, so be sure to keep documented evidence of your mark in use. For IZZWHIZZ VA, I keep website screenshots, social media materials, an invoice template in a file to readily show evidence of the mark as it is used in the real world.
After 10 years, if you don’t renew your registration with the UKIPO, it will expire. But if you do renew, you can keep doing so indefinitely. The first trade mark registered in the UK was the BASS red triangle in 1876 and this registration still exists today!
Why I Recommend Professional Support
Qualified trade mark professionals (such as those registered with CITMA) do far more than file a form. They look at your long-term strategy to keep your brand safe as you grow. They run thorough clearance searches, assess the risk of your application being rejected, help you prepare for objections, and draft precise specifications that protect how you actually use your mark.
They can also provide a "watching service," where they keep an eye out for any marks that are similar or identical to yours being filed by others, so you can take action if you need to. They also take care of your portfolio management, such as renewals and recordals, ensuring your asset remains valid.
Izz Whizzdom
Whatever route you choose, be it the DIY route with the UKIPO or consulting with a registered trade mark attorney, make sure you give it your consideration sooner rather than later. Your brand is the foundation that your whole business is built upon - give it the protection it needs.
Nothing contained within this blog constitutes legal advice and is not intended to be exhaustive; it is aimed to be an overview guideline from a qualified trade mark paralegal to give you insights into how to navigate the trade mark process. My business and I cannot be held liable for your trade mark protection. As always, I strongly recommend seeking professional advice from an appropriately qualified trade mark attorney, IP lawyer, or solicitor. I am happy to provide bespoke recommendations from my legal network, or you can find a directory of CITMA-registered attorneys here.
Izz Whizz VA: DIY Trade Mark Checklist
If you are taking the DIY route, here is a quick summary to keep you on track:
Search: Use the UKIPO database to check if anyone has already registered your name, or something similar, in your specific industry.
Classify: Use the UKIPO Search UK trade mark classes service to pick the categories that match your actual business activities.
Accuracy: Proofread every detail. Remember, your application will be published on a public register. And once filed, you can’t change your mark.
Check: Consider using the UKIPO Right Start Service for an initial check of your application before it is examined by a UKIPO officer. There is a small additional fee but it will give you peace of mind that you have done everything correctly.
Strategic advice: If you find the process overwhelming, or if you aren't sure about your search results, don't guess. Reach out to a CITMA-registered attorney to ensure your long-term brand strategy is protected. Reach out for my recommendations from my extensive legal network.
About the Author: Isabelle Pearcey
Isabelle Pearcey is the founder of Izz Whizz VA. With nearly 30 years of experience as a senior-level Executive Assistant and Business Manager within international law firms and corporate environments, she also brings specialist expertise as an IP paralegal. Having personally experienced the overwhelm of scaling a business, she now helps values-driven founders reclaim their time by building high standard, ethically managed, and reliable back end business support systems with an empathetic, human touch. Get in touch via email isabelle@izzwhizzva.co.uk or book a call here to talk through where you need support in your business.
