Trust me, a trademark agent could be really poor, and worse still it is not rare at all! While it is hard to swallow, the facts remain that no/little regulation is in place on the qualifications of trademark agents in many jurisdictions.
Pausing here, perhaps the smart and tricky you would immediately likewise question the competency of Trasomark! Legitimately so our dear readers! May we however urge you to consider:–
1. Did you enjoy our short articles? Be benefited/inspired?
2. Is it a good business model to charge a modest annual fee if long-term trust could not be built? Won’t it be easier to charge a big lump sum upfront instead?
The sad thing is, with a poor trademark agent, sometimes it is not straightforward to notice how harmful their unprofessional advice could bring to your business. This is the typical problem of “not realizing a problem”!
Some time ago, a new client Jeffrey came to us for a trademark enquiry. Jeffrey has been operating a restaurant called “FUNNY” for almost 3 years, which successfully survived the pandemic (What an achievement!). Jeffrey now becomes very serious about his business and seeks to register his “FUNNY” brand. Jeffrey went for two trademark agents but, to his surprise, both of them refused to take up the case and advised Jeffrey that there is simply no hope of securing trademark registration, thanks to an earlier mark “FUNNY (a different design)” mark in class 43 (catering services) registered back in 2015. Full Stop.
With full respect, these two agents are not bad at all. They were diligent enough to carry out a simple trademark search for potential clients and did not fuel clients with false hope for embarking on trademark filings. Their judgment call could not be faulted too. Who in their sound mind would oppose the conclusion that two “FUNNY” marks with different designs will still be considered as confusingly similar marks (Refusal On Relative Grounds)? A good trademark agent could however see things in a more proactive and comprehensive manner.
We talked with Jeffrey and learnt that “FUNNY” meant a lot as his wife always thinks he is the funniest guy she ever met, and rebranding will only be his last resort. We studied and dug out some background information, and explored together with Jeffrey certain different options to try to secure “FUNNY” trademark registration. Some proposed actions could be very aggressive such as the cancellation of earlier marks, while other actions may be more subtle without alerting third parties. Of course, different levels of costs and risks will be associated with various proposed actions, and they are not mutually exclusive. Jeffrey needs to make a final commercial decision, but at least he is blessed with choices.
We are not suggesting Trasomark is the best trademark agent in this world. We have been working with top agents across this world for years and only know how good they are. However, nothing is more apparent than in Jeffrey’s story that engaging a sub-standard agent could ruin your business. If Jeffrey chose to adopt the first two agent’s advice, putting aside the special bonding with the “FUNNY” brand, Jeffrey is required to spend some handsome money on redesigning the menus, uniforms, signboards, website, online advertisements; etc. More painfully, it will take a long journey to turn the customers’ affections from “FUNNY” to, say, “BUNNY”.
