Brand development, trademark creation & advertising agencies: hints from a German Trademark Lawyer!

For many advertising agencies, brand development and the creation of trademarks is part of their core business. With our many years of experience as “Trademark Lawyer”, being a Patent Attorney (European Patent, Trademark and Design Attorney) and German Attorney-at-Law (Certified Intellectual Property Lawyer), we have been able to support many clients (founders, start-ups as well as established companies from around the world) and various advertising agencies from Germany and further countries in trademark law as well as in the development of brands. We would also be happy to assist you in protecting your idea. As IP Lawyers, pure brand development is not one of our activities, but we can help you with legal advice in trademark law as well as a trademark registration in Germany and further countries and provide you tips in this regard.

1. Already during the brand development or name finding process, care should be taken to choose a distinctive sign – i.e. name, company name and / or logo – which is e.g. not descriptive and is able to develop into a “strong” brand.
2. Once the desired trademark or a closer selection of signs for selection has been determined, it is essential to conduct an initial trademark search (trademark check) in the official databases / trademark registers in order to find possible conflicting trademarks of third parties. For a planned trademark application in Germany, for example, the register of the German Trademark Office (GPTO) should be searched.

We would be happy to conduct this initial search for you, or to perform a risk assessment with regard to possible hits!

3. If the initial trademark search is positive, it is advisable to check whether relevant domain names are still available. Even if rather exotic domain endings like .io, .store, .news etc. are becoming more and more popular, it is often advisable to (also) save the .com or .de domain ending, if it is still available.
4. At the same time or even before the registration of domain names, one should deal with the registration of the trademark and (have) a trademark application – if necessary after a further, more detailed trademark search.

Important: From our practical experience there are various examples that in trademark law often every day can be decisive and identical or very similar trademarks are often applied for within a short period of time. Since the “first come, first served principle” basically applies in trademark law, the party with the earlier application has the better trademark right.

Although a trademark application can theoretically be filed without a Trademark Attorney, it is advisable to consult a specialist (e.g. a Patent Attorney or an IP Lawyer) in order to avoid obvious and avoidable mistakes. In this way, it can be avoided that the protection is not too narrow and optimally adapted to the offer to be protected.

With our experience from hundreds of trademark applications in Germany (German trademark filings) or EU trademark applications, we are also happy to help you. Depending on the favorable package offer chosen, we can assist you, among other things, in the strategic selection of the required scope of protection as well as in the preparation of the appropriate list of goods and services according to the so-called Nice Classification or in the development of a trademark strategy.

Attention: Since the registration of protective rights is a legal service, the representation of third parties is only permitted by Patent Attorneys and/or Lawyers. As a rule, advertising agencies without this qualification may neither advise nor represent in this area.

5. In addition to the protection of names or logos, it should also be examined whether other intellectual property rights can possibly be protected by IP rights. Especially when protecting software or apps, it can make sense to check whether an app can be patented or software can be protected. If you want to make a basic check yourself, you can access our free idea protection check here.

6 It is often forgotten that the topic of trademark law is not over with a successful trademark application. For successful trademark maintenance, it is advisable to set up a trademark monitoring (collision monitoring) of third-party applications or to implement a market monitoring.

We will be happy to help you with any questions you may have on the subject of trademark law!

Important: Even if there is no absolute certainty in trademark law, the issue should at any rate be clarified as far as possible before market entry so that at least obvious mistakes can be avoided. Almost nothing is more annoying than an accusation of trademark infringement (e.g. warning letter, preliminary injunction or lawsuit) shortly before market entry – or even worse, when the offer is already “live” or the product is already on the market.

For advertising agencies, our German Patent Attorney and IP Law Firm also offers crash courses in trademark law or “question-and-answer sessions” to teach employees the basics they need to know. Simply contact us and let us know your consulting needs, so that we can then provide you with an individual offer!