Why DIY trademarking fails

Economic times are tough and the DIY culture is thriving…which is great for the entrepreneurial ethos, but potentially not so good for the successful protection of your trademark.

Take the case of the following DIYers:

In 2016 Mr A starts manufacturing clothing and wants to protect his trademark BLACK PEARL. He conducts his own search on CIPC’s website, finds no conflicting mark and files his trademark application. He invests money in packaging, printing and advertising and believes all is well.

Not so fast, Mr A. You overlooked Mr B’s application BLAQUE PEARL, also for the manufacturing of clothing but filed in 2015. With trademarks, it is usually ‘first come first served’ and Mr B’s trademark BLAQUE PEARL will block Mr A’s BLACK PEARL because they are phonetically exact.

Mr B is happy. Again, not so fast, Mr B. Enters Mr C, who applied for AFRO PEARL in 2009. He is opposing Mr B’s BLACK PEARL, because it is conceptually similar and there may be grounds for confusion.

Mr C is also happy…until he finds out his AFRO PEARL application has never moved to final registration because CIPC accepted it conditionally and Mr C either never complied with the official actions sent to him or never received them.

The outcome? Mr C’s application is dead in the water, Mr A’s application will be refused and Mr B is the clear winner – if he complies with the official actions within the three month period allowed (and there will be official actions) or there are no further objections or oppositions.

This whole scenario could have been prevented if the applicants invested in a comprehensive search and had an assigned attorney to alert them to possible objections or oppositions.

Is it worth saving some money initially but losing your valuable brand by doing it yourself?

(All the trademark applications mentioned are on the official Trademark Register and are open to public inspection. They were used as a random example and no negative intent should be inferred.)