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Discussion on: Why did you pick that name?

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turnerj profile image
James Turner Author

Yep, I did follow through from this post and get a trademark filed for my new product (well, currently filed in Australia pending final approval). It has been a long (and somewhat expensive) process to find out whether I am going to hit issues with certain names internationally as I did talk to a lawyer from the beginning of this process.

I want to avoid giving any legal advice because I am definitely not a lawyer. What I can say though is do as much research as you can regarding the name you're looking at.

  • Is anyone using that name currently from a Google search?
  • Are relevant domains available for your name? (easier if you only want ".com.au" and not a ".com" as you can have some "right" to the domain)
  • Has anyone filed a trademark for the name already in the countries you potentially want to trade? (There are a bunch of sites for searching trademarks in Australia, the US, the EU etc)

Once you have these questions answered, I'd personally talk to a lawyer about it as they have a lot of useful feedback like whether the name is a trademarkable word or phrase or what class your name is for. If you don't know yet, trademark classes are another whole bunch of fun, categorising what type of business the name is for. As far as I understand though, you can actually file a trademark manually (in Australia at least) without a lawyer's help but unless you are sure you know what you're doing, I wouldn't do it.

One thing I will state is I operated my business "Turner Software" for over 9 years without a trademark in Australia. It is however a registered business name against ASIC which, depending on your requirements, may be enough. I've only started approaching the whole trademark issue (and not even for "Turner Software") because I am wanting to offer my product internationally.

Hope that helps!

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govendor profile image
go-vendor

Thanks for the pointers. I am planing to trademark in Australia and US, and as you said, looks like it's worth getting an attorney's help (any recommendations? ofcourse if it permitted to post it here).

In the mean time I am curious, did you need to launch first in order to establish that you are already using the tm, or you were advised that its okay to file the application first and then launch(for both - international and here in Australia)?

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turnerj profile image
James Turner Author

Like my original article covers to some extent, I had launched basic marketing under one name only to find out later that it was trademarked in Germany. At that stage though, my product wasn't (and still isn't) launched.

As far as I understand from a trademark perspective, it doesn't matter launching before or after. That said, if you launch first then find out later you can't have the name, you may need to walk any branding etc back.

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