Are you a VA and do you have questions about what VA terms you can use, not use and what you can potentially trade mark? Maybe you've received a letter from someone claiming you're not allowed to use a certain VA term because they have a trade mark registered with it. Then read on to unravel the world of VAs and trade marks!
What is a trade mark?
This is a form of intellectual property that can be used to protect a business’s brand. A trade mark can be a word, logo, slogan, colours and even sound (or a combination of these) that represents your business identity. A trade mark can be registered or unregistered. But, by having a registered trade mark it is simple and easy to stop others from using the same or similar mark for the same or similar services. You simply need to produce your registration certificate and write a cease and desist letter. If your mark is unregistered, you have a few more hoops to jump through to prove ‘passing off’ has happened. This involves proving you have a reputation in your services; that there has been some confusion as to who is behind the brand that is copying you; and that you have suffered some kind of loss as a result.
What can (and cannot!) be registered?
According to the Trade Mark Act 1994 (TMA), to secure a trade mark registration, the mark must:
· Be capable of being represented graphically;
· Be distinctive;
· Not be descriptive
· Not be excluded under the TMA.
But you must not register something that is the same or similar to an existing trade mark registration and you must not register something that is descriptive of the services you provide.
What can’t you register in relation to VA services?
In the VA world you are unlikely to succeed in registering anything with the words ‘virtual assistant’, ‘VA’ or other generic VA terms in your trade mark. To succeed in making it ‘distinctive’ and not ‘descriptive’ you would probably need to couple up the word with a logo.
For example, if I set up a VA business for the dentistry industry and wanted to call it ‘Dentistry Virtual Assistant’ then I would only get that registered if I coupled up the words with a unique logo, stylised the letters and registered it as a combined logo/word mark. Here’s one I prepared earlier…this would probably achieve registration status. But I would only be able to stop someone using the words ‘Dentistry Virtual Assistant’ if they were also using the yellow colour or a similar tooth logo in a cape.
How does the trade mark registration system work?
To get a trade mark registration you have to apply to register your mark against a specified list of goods or services that relate to your business. It would be unfair to ear mark a brand for every type of business/industry. For example, I would not be able to stop someone setting up a picture framing business called ‘Aubergine Frames’ – this has nothing to do with the legal industry in which my ‘Aubergine Legal’ brand is protected by a trade mark registration. However, if another law firm set up and called themselves ‘Legal Aubergine’ or ‘Aubergine Law’, then I would be able to use my trade mark registration to stop this use of the word ‘Aubergine’.
If you decide to protect your brand as a trade mark registration you will need to file an application at the UK Intellectual Property Office (IPO). It costs £170 to file a trade mark at the IPO, plus an additional £50 for any additional classes you require to register the mark in.
When you apply for a trade mark there are certain steps your application must go through before registration is reached. The mark must first be reviewed by a Trade Mark Examiner. They will look at whether the mark is actually registrable and check the registers to see if anyone has an earlier mark that is the same or similar to your proposed mark for the same class of goods/services.
Once the Trade Mark Examiner is satisfied the mark then gets ‘advertised’ for a couple of months. This gives anyone with an earlier right the opportunity to oppose your trade mark application. If an opposition is lodged then an opposition process is launched which would involve more fees and time delays.
If no opposition is lodged then the mark proceeds to registration and you are issued with a trade mark certificate. Your mark is then protected by a trade mark registration and you will be able to stop someone else using the same or similar mark for the same or similar type of goods/services.
If no oppositions are lodged then the whole process typically takes somewhere between 4-6 months from application to registration.
What class of goods should I register my services against?
As a virtual assistant you will need to register your trade mark in class 35 – which is for business administration services.
You can use this link (www.search-uk-trade-mark-classes.service.gov.uk/searchclasses) to help formulate the specific specifications, or use a solicitor or trade mark attorney to help sort out the list for you. A typical list would be along the lines of the following (depending on your service offering):
Business assistance; Marketing assistance; Management assistance; Business administration assistance; Business management assistance; Assistance (Business management -); Assistance with business management; Provision of business assistance; Assistance with business planning; Management assistance for promoting business; Providing business assistance in the field of [INSERT AN INDUSTRY, e.g. dentistry]; Providing business assistance start-up support for [INSERT AN INDUSTRY, e.g. dentistry] businesses; Business organisation advice; Business secretarial services;
This list is just an example you may need to delete or add descriptions depending on your service offering. You will need to make sure there is a description for all your types of services and activities.
What should I do if someone sends me a letter and tells me to stop using generic VA terms?
1. Stay calm and read the letter carefully – what are they actually asking you to do?
2. Check their trade mark registration. You can do this on the IPOs website here: http://www.gov.uk/search-for-trademark
3. Look carefully at their registered list of specifications. Do they actually have the mark registered in class 35, or have they simply registered it against other types of services which don’t overlap with the services you provide to clients?
4. Consider your response and work out whether you have a defence or want to negotiate.
5. Respond to the letter – if there is no overlap then you can state this and ask them to explain on what basis they are requesting you to stop using the term?
6. If someone is trying to stop you using generic virtual assistant terms like ‘virtual assistant’; ‘VA’; ‘virtual administration’; virtual services’; then you can explain that these are generic terms used within the VA industry and are descriptive of the services being provided – being something that the Trade Mark Act 1994 prevents from being registered. If they have managed to get a registered trade mark (for the words alone) then you could threaten to bring an action to get their trade mark registration invalidated on absolute grounds. See here for more information on this process: https://www.gov.uk/government/publications/trade-marks-invalidation
7. Seek legal assistance from a solicitor specialised in trade marks or a trade mark attorney. They will be able to check the trade mark owners registration, analyse whether there is any overlap and advise on steps to be taken to potentially invalidate the registration. This usually starts with a stern letter and then if that doesn’t work an invalidation process can be commenced at the IPO.
Get in touch if you need any specific advice.