Registered trademarks are an investment and not an expense. Trademark registrations will save you money in the long-run as it is far more difficult and expensive to defend against potential infringers if you do not have a registered trademark. To ensure that your trademark registration provides you with the best possible protection it is important to seek professional advice on the subject. Many DIY applications fail. Furthermore, many DIY trademark registrations do not give any protection for reasons such as poorly drafted specifications or registrations in the incorrect classes. Unfortunately, proprietors of these trademark registrations will only become aware of this when it is too late to do anything about it. Registered trademarks provide you with significant protection. Unregistered trademarks, on the other hand, provide no protection whatsoever unless you can show that they have acquired a reputation. For many small and medium sized business this (i.e. proving a reputation) can be extremely difficult, if not impossible, to prove. Failure to register a trademark is not a risk worth taking. Not even famous or well-known sportsmen are prepared to take the risk.
Take Andy Murray for instance. The Scottish tennis player recently made the move of trademarking his name to protect his image rights. The UK Intellectual Property Office rubber-stamped his application on Boxing Day.
Gaining exclusive rights over Andy Murray-related merchandise means that other people can’t make money by using his image without his permission.
Interestingly, when the forms were submitted to the IPO, Murray’s camp were astonished to learn that a number of chancers had already applied (and failed) to trademark ‘Andy Murray’, ‘Andy Murray Wimbledon Winner’ and ‘Andy Murray Tennis Champion’. Worrying, isn’t it? Some people don’t miss a trick, people who have never even spoken to Andy Murray, let alone gained his permission to use his name or image.
Everybody is entitled to protect their name as a trademark provided it is capable of functioning as a trademark (and does not conflict with an earlier trademark registration). Former Manchester United boss Alex Ferguson was initially told that he couldn’t protect his name because it wasn’t distinctive enough. Fergie applied in 2005, but it was ruled that his name was ‘devoid of any distinct character’. A very strange decision indeed. However, I see that the mark was subsequently accepted so I assume that he was forced to file evidence proving that his name and trademark were indeed distinctive.
Other trademark applications from celebrities worthy of note include Gareth Bale trademarking his ‘heart’ goal celebration, Donald Trump unsuccessfully trying to trademark the phrase ‘you’re fired’, plus Beyonce and Jay-Z failing to trademark their daughter’s name (Blue Ivy) for baby products.