When applying for a trademark, choosing the proper scope of goods and services is crucial. However, many applicants tend to designate the scope too narrowly, which can lead to potential commercial and legal risks for the brand’s future development. This article will explore the reasons why applicants might make such decisions and how to avoid these pitfalls to ensure effective trademark protection.
Imagine a startup clothing brand, “UrbanKurashi”, which focuses solely on athletic wear. They apply for a trademark under the specific category of “sports apparel”, confident that this will cover their needs. However, a few years later, due to a rise in customer demand, they decide to launch a casual footwear line. When they attempt to use their existing trademark to protect their new products, they discover that the original trademark application doesn’t extend to casual shoes. Worse yet, a competitor has already registered a similar name in the footwear category, putting UrbanKurashi in a tough spot. Their narrow trademark scope has left them vulnerable.
This example highlights the importance of considering future growth when choosing a trademark’s scope. Failing to anticipate potential business expansion can create legal headaches down the road and may even allow competitors to capitalize on your brand’s name in new markets.
Many applicants, like UrbanKurashi, assume that their goods or services will remain within a specific area, so they only select categories relevant to their current business. However, in today’s dynamic business environment, consumer demands frequently change, and companies may find themselves entering new markets. If this possibility is overlooked during the initial trademark application, a narrow scope might restrict the brand’s potential for future growth. As a result, if a company later ventures into new fields, it may face a lack of trademark protection, or worse, competitors may seize the opportunity to register similar trademarks.
In another instance, consider a tech company, “AmazingWaza Inc.”, known for producing smartwatches. They apply for a trademark that only covers their watch products. A few years later, they decide to introduce a health tracker and other wearable fitness devices. However, because their trademark application was limited to smartwatches, other companies have already claimed similar trademarks in related categories, leading to market confusion. Customers are now mixing up AmazingWaza’s brand with a lesser-known competitor, weakening the brand’s identity.
A narrowly defined trademark can often lead to competitors exploiting gaps in coverage. As a result, even if the original company decided to expand its product line when ready, it might face a situation where it lacks sufficient legal protection to prevent market confusion or stop others from diluting its brand.
Furthermore, a trademark with a narrow scope may weaken its protective power. The primary function of a trademark is to protect a brand’s identity from being used by competitors. If the trademark’s protection is limited to a narrow scope of products, competitors could use similar trademarks in other related or similar product categories, and the original applicant may struggle to prevent it. This could cause market confusion and dilute the brand’s recognition. Therefore, when applying for a trademark, it is advisable to consider a broader and related scope of goods and services to enhance the trademark’s protection and prevent future brand conflicts.
Some applicants might worry that choosing a broader scope will increase the risk of the trademark application being rejected. They mistakenly believe that a narrower scope makes it easier for their trademark to be unique and less likely to conflict with existing ones. However, this concern is often based on a misunderstanding of the risk of rejection. In reality, applicants should prioritize choosing a scope that reflects their current business and future plans. As long as the trademark is sufficiently distinctive and being recognized by relevant consumers, a broader scope does not necessarily increase the risk of rejection.
Finally, many applicants may incorrectly assume that a trademark must be used immediately for all the goods and services applied for, which leads them to limit the scope to current products. However, trademark regulations such as those in Taiwan, as long as the trademark is used within three years after registration, which means either in product transactions or service offerings, it satisfies the usage requirements. Taiwan also allows trademark applications even before use, without needing a declaration of intent to use.
Trademark holders in Taiwan are not typically required to submit evidence of trademark use regularly, unless they are subject to a revocation application filed by a third party. Therefore, unless a conflict with others is expected in the short term, we recommend a more flexible strategy for trademark application in Taiwan. Applicants should consider a broader scope that covers future goods or services, ensuring the trademark can support long-term business growth in Taiwan market. This approach helps to prevent potential trademark disputes and brand conflicts.
Taking these steps ensures that a company isn’t caught off guard when it’s ready to expand but lacks the trademark protection to do so. It is far easier and more cost-effective to apply for a broader trademark scope from the start, than to face reapplication fees and potential legal battles down the road.
In summary, when applying for a trademark, it’s important to think ahead and plan carefully. Brands should consider their potential for future growth, plan the scope of their application wisely, and consult with professionals to avoid unnecessary risks. A scope that is too narrow may limit the brand’s growth, weaken its trademark protection, and lead to misguided decisions based on a misunderstanding of rejection risks. By taking these proactive steps, applicants can ensure their trademarks cover future business expansion. Of course, designating too broad a scope may also create other unnecessary risks, which would be another topic for our future discussion.
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