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What is a Trade Mark Application Worksheet?
A Trade Mark Application Worksheet collates vital information and decisions about an intended trade mark registration, to help you register a trade mark efficiently and cost-effectively. Trade Mark Application Worksheets cover trade mark classes and terms, similar trade marks, and other relevant trade mark registrations to improve your chances of successfully registering a trade mark and protecting your brand
When should I use a Trade Mark Application Worksheet?
Use this Trade Mark Application Worksheet:
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to register a trade mark in the UK
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to protect images, logos, words, colours, sounds, or a combination of these that your business uses to brand and market products
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if you’re applying for the trade mark yourself (ie on behalf of your business) or if you’re working with a trade mark pro
Sample Trade Mark Application Worksheet
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TRADE MARK APPLICATION WORKSHEET
Applicant
Intended owner of the trade mark: (referred to throughout this worksheet as ‘the business’).
Contact person for this application:
- Name: .
- Email: .
Identifying the Trade Mark
The trade mark consists of.
Description of the trade mark:
Suitability as a Trade Mark
I am not certain whether the trade mark is not:
- Offensive.
- Only descriptive of the product(s) it relates to.
- Misleading.
- Too common or non-distinctive.
- A generic shape associated with the business.
- Making use of national flags.
- Making use of official emblems or hallmarks.
I require assistance determining whether the trade mark is likely to be refused registration due to this uncertainty.
Classes and Terms
The trade mark will be used in the branding and/or marketing of the following goods and/or services:
Series Applications
Origin and Use of the Trade Mark
Other Trade Marks
Other Jurisdictions and Registrations
The business does not have any existing or pending registrations for the trade mark in any other jurisdictions.
About Trade Mark Application Worksheets
Learn about making your Trade Mark Application Worksheet
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How to make a Trade Mark Application Worksheet
Making your Trade Mark Application Worksheet online is simple. Just answer a few questions and Rocket Lawyer will build your document for you. When you have all the information about the trade mark and its intended use prepared in advance, creating your document is a quick and easy process.
You’ll need the following information:
The trade mark owner
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What are the name, address, and legal structure of the trade mark owner (ie the business that will own the registered trade mark)? If it’s a company or LLP, what is its company or LLP number?
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Who is the contact person for this application? What are their contact details?
The trade mark
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What does the trade mark consist of? Eg words, a logo, an image, or a combination of these.
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What is the trade mark? You must provide a description of the trade mark. If the trade mark is visual, you should also provide a representation (eg drawing) to support your description.
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Are you confident that the trade mark is:
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Not offensive (eg containing swear words)?
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Not purely descriptive of the product(s) it relates to?
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Not misleading?
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Not too common and not non-distinctive?
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Not a generic shape associated with your business?
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Not using national flags?
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Not using official emblems or hallmarks?
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Where did the business get the trade mark from? For example, did an employee develop it?
Use of the trade mark
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What products will the trade mark be used for?
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Do you know which classes you need to register the trade mark in? If so, which classes?
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Has the business been using the trade mark already? If so, when did they start?
Variations of the trade mark
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Do you also want to register variations of the trade mark?
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If you do:
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Which variations do you want to register?
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Do you want to make a series application?
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Similar trade marks
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Have you searched for similar marks in the UK trade marks database? If so:
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Did you find any trade marks you’re worried are similar to your trade mark? If so, what are their trade mark numbers?
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Other registrations
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Does the business already have completed or pending registrations for the trade mark in other jurisdictions?
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If so, where?
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Do you want to register the trade mark in any other jurisdictions?
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If so, which jurisdictions? And when (ie immediately and possibly in conjunction with your UK trade mark application, or later)?
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Has the business previously had a registration for this trade mark in the UK?
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If so, when did it expire?
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Common terms in a Trade Mark Application Worksheet
Trade Mark Application Worksheets help you collate information about a trade mark you want to register and its use, to streamline the trade mark application process. To do this, this Trade Mark Application Worksheet template includes the following terms and sections:
Applicant
The Trade Mark Application Worksheet starts by clearly identifying the business that will be listed as the trade mark’s legal owner once the registration is complete. It also elects a contact person to be responsible for facilitating the application or liaising with a trade mark pro.
Identifying the trade mark
It’s vital that you accurately identify the mark you want to protect, and this section helps you to do this. It sets out what type of mark it is and provides a description.
Suitability as a trade mark
To be capable of registration as a trade mark in the UK, a mark must meet certain criteria. For example, it must not be offensive, misleading, too common, or various other things. This section of the Worksheet identifies which criteria you’re confident the trade mark meets and any you’re concerned that it may not meet (you can use this to highlight any potential issues to a trade mark pro, who can help you ensure your mark is capable of registration before you apply).
Classes and terms
This section identifies which products (ie good and/or services) the trade mark will be used to market. It then states whether you know which trade mark classes to register in (and, if so, which) and whether the business has already been using the trade mark (and, if so, when this started).
Series applications
This section deals with variations of the trade mark. It identifies whether there are any variations you also want to register and, if so, whether you want to make a series application or if you’re unsure that doing so is suitable.
Origin of the trade mark
Next, the Worksheet specifies where the business obtained the trade mark. This helps any trade mark pro you work with to establish whether you might need to navigate other parties’ intellectual property rights (IPRs) in relation to the mark or other ownership challenges.
Other trade marks
This section states whether you’ve already searched for the trade mark on the UK trade marks database and, if so, whether you’ve found any marks you’re concerned are similar.
Other jurisdictions and registrations
Finally, the Worksheet identifies any complete or in-progress registrations for the trade mark that the business already has in other jurisdictions. If you want to register the trade mark in additional jurisdictions (now or in the future), this is set out here too.
If the business previously had a registration for this trade mark in the UK, this is identified here too, to help establish whether a renewal or restoration may be possible.
Representation of the mark
If your trade mark can be represented visually, this section will be included on a new page. This is where you should insert or attach an image of the trade mark in preparation for registration or to clearly communicate the trade mark to your trade mark pro.
If you want your Trade Mark Application Worksheet to include further or more detailed provisions, you can edit your document. However, if you do this, you may want a Legal Pro to review the document for you (or to make the changes for you) to make sure that your modified Trade Mark Application Worksheet meets your specific needs. Use Rocket Lawyer’s Ask a lawyer service for assistance.
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Legal tips for registering trade marks
Be organised
Registering a trade mark is not a straightforward and quick process. It’s important to plan ahead when developing new products or marketing strategies, to ensure you have your registration completed in time to use the trade mark when you want to.
It’s also important to collect all the information you need to make your application, to ensure you don’t miss any key aspects like selecting classes or checking for existing similar marks. Making a Trade Mark Application Worksheet can help you do this.
Consider other intellectual property rights
Trade marks are one of many intellectual property rights, all of which grant their owners rights in relation to their exclusive use. If you want to use something (eg an image) to brand or market your products, and it’s not protected by a registered trade mark, you may still be infringing somebody’s IPRs by using this mark. For example, if you use an artwork somebody else created, it may be protected by copyright.
Additionally, an unregistered trade mark still has some legal protection in the UK. If a business can show they have a reputation and goodwill in a mark and that your use of it might cause customers to confuse your brand with theirs, they may be able to bring a legal claim for ‘passing off’. For more information, read Trade marks and passing off.
You can work with a trade mark pro to investigate whether any such rights might pose a risk to your use of a mark.
Remember to renew your trade mark
Trade mark registrations in the UK last for 10 years. After this, your protection ends. You can apply to renew a trade mark indefinitely for additional 10-year periods. Make sure to monitor your trade mark portfolio after making registrations, so that you don’t miss your renewal dates.
For more information, read Renewing a trade mark.
Understand when to seek advice from a lawyer
In some circumstances, it’s good practice to Ask a lawyer for advice to ensure that you’re complying with the law and that you’re efficiently managing your intellectual property. You should consider asking for advice if:
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you don’t know which classes to register in
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you’ve found registered trade marks similar to your trade mark
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your trade mark was made by somebody else
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you previously had a registration for this trade mark in the UK or elsewhere
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you want to register your trade mark in multiple jurisdictions
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you need help making a series application
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Trade Mark Application Worksheet FAQs
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What is included in a Trade Mark Application Worksheet?
This Trade Mark Application Worksheet template covers:
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the trade mark owner
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identifying the trade mark
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trade mark classes and terms
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variations and series applications
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the trade mark’s origin and other rights to the mark
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similar trade marks
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registrations in other jurisdictions and previous registrations
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Why do I need a Trade Mark Application Worksheet?
Registering a trade mark means that it becomes protected by law in the UK, so that the trade mark’s owner has exclusive rights to the mark’s use in the branding and marketing of the products for which they’ve registered the mark.
Making a Trade Mark Application Worksheet helps you to apply for a registered trade mark with stronger chances of success. It helps you collect all the information you need in one place and guides you through various things you should consider before making your application – like which class or classes to register in, whether to make a series application, checking for other similar trade marks, and whether you should apply for multiple registrations at once.
If you’re working with a trade mark pro to register your trade mark, giving them a completed Trade Mark Application Worksheet ensures you clearly communicate what trade mark you want to register and all information and potential complications relevant to the mark, so your pro can help you protect your brand successfully.
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How do I register a trade mark?
In a nutshell, registering a trade mark involves submitting an application to the UK Intellectual Property Office (IPO). They’ll then process your application and provide feedback on any issues, publish it to see if any oppositions are received, and eventually register it.
For more information on each stage of this process, read How to register a trade mark.
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What can be registered as a trade mark?
Only certain things are capable of being registered trade marks in the UK. The most common are words, logos, sounds, colours, or combinations of these. Additionally, trade marks cannot be certain things (eg misleading, offensive, or too common or non-distinctive).
For more information, read How to register a trade mark.
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What is a series application?
A trade mark series application is where you apply to register multiple trade marks at the same time, because they’re part of a series of trade marks. This is only possible for a trade mark and variations of this trade mark that look, sound, and mean the same – there can only be minor differences between the marks. For example:
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'CAT' and 'cat'
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colour and greyscale versions of the same logo
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'HOLE' and 'holes'
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'Trade mark' and 'Trade mark'
The rules on what variations can be registered as a series are complex. For example, 'Rocketlawyer.com' and 'Rocketlawyer.co.uk' could probably be a series, whereas 'Rocketlawyer.com' and 'Rocketlawyer.edu' would be too different.
When you want to protect variations of a trade mark, making a series application is often the best way to do this if it’s appropriate for your situation, as the fees for such applications are less than the fees that would apply for multiple entirely separate applications. A maximum of six variations can be registered via a single application.
For more information, read the IPO guidance on trade mark series applications.
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What are trade mark classes and terms?
Trade mark classes are the groups of products (ie goods and services) that a trade mark is registered for. When registered, a trade mark is only protected for use for the products within the classes that it’s registered for.
The UK uses the Nice Classification system, which sets out 45 different trade mark classes, each covering a wide range of products. Trade mark terms are subgroups of classes.
When you register a trade mark, it's important to precisely identify products that you’ll use the trade mark for (which determine the classes you need to register in), as similar products often sit within different classes. For example:
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dog clothing is covered by Class 35, but pet jewellery is covered by Class 14 – if you were adding your trade marked logo to both of these products, it would need to be registered in both classes
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a business's own clothing line would sit in Class 25, selling other people's clothing in your shop would be Class 35
It's important to register your trade mark in all necessary classes and no more, but achieving this is something of a balancing act. You should cover all products the business intends to use the mark for, to ensure your use of the mark for these products is protected. This includes products you’re not yet using the mark for, but you will in the near future. Conversely, it's important not to register in more classes than necessary, because:
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each class you register in incurs a fee
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registering in more terms and cla sses makes it more likely your mark will be similar to an existing trade mark, which could lead to your application being refused
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if you register your mark in a class that you do not use within the next five years, you may face legal action and associated costs
For more information, read Trade mark classification. You can get help selecting classes and terms from a Legal Pro.
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How do I check for similar trade marks?
If an existing registered trade mark is too similar to the trade mark you want to register, your application might be opposed and ultimately unsuccessful. So, it’s important to find out if there are similar marks before you make your application.
The main way to check for existing similar trade marks is by searching the UK trade marks database. However, a simple search won’t always exhaust all possible similar marks and other complicating intellectual property rights. For example, you may not use the correct search terms, or a business may be using a mark similar to yours that’s not registered but which is protected by other intellectual property rights. Working with a trade mark pro can help ensure you comprehensively check for similar marks and other problematic IPRs.
For more information, read How to register a trade mark.
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What if I want to use an existing registered trade mark for new products?
If your new products sit within a class that you’ve already registered the trade mark for, you don’t need to do anything. You can simply use the trade mark for these new products and it will be protected.
If you want to use the trade mark on products within new classes, you’ll need to get the mark registered in these new classes. Once a trade mark has been successfully registered, it can’t be amended. This means that you can’t add new classes to an existing registration. To protect your trade mark in new classes, you’ll need to make a whole new trade mark application for the same trade mark but covering the new class(es). You can make a fresh Trade Mark Application Worksheet to cover your new application.
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Can I register a trade mark internationally?
You can register to protect a trade mark in multiple jurisdictions (ie countries or collections of countries, such as Australia or the EU). Depending on where you want to protect your trade mark, sometimes you can make a single application that covers multiple countries at once.
For more information, read Registering a trade mark in the EU and International trade marks.
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