How to register your trademark yourself, and cheaply

Hello, business owner. If you have ever caught yourself wondering whether registering your trademark is worth it, or whether that is only for big companies, this article is for you. I will answer the questions that keep arriving here:

• How long does trademark registration take?
• Is registering a trademark expensive?
• What are the basic rules of trademark registration?
• Which images and symbols cannot be registered as a trademark?
• Which words cannot be registered as a trademark?
• Can I register numbers as a trademark?
• Can I register colors as a trademark?
• Can I use my own name or my children's names as a trademark?
• Can a refused application be overturned?

Let us take it step by step. Holding the registration of your trademark means holding the legal right to use that name, symbol or expression across the whole country, and even outside it. Without that document, any competitor acting in bad faith can ride on the reputation you built to sell a similar product, and there is very little you can do about it.

In Brazil this is handled by INPI, the national institute of industrial property. It is the federal body that makes sure every registered trademark follows the industrial property law, law 9.279/96.

And this is not paranoia. According to INPI itself, more than 26 thousand companies file an application every year. It is not rare for a company with no registration to go through an embarrassing situation, with a real financial loss attached.

With no registration, your brand can be taken from you at any moment.

In 2022 a national newspaper reported a case that shook everyone: the brand "As Patroas", a partnership between the singers Maiara and Maraísa with Marília Mendonça. In the same week, Maraísa announced on social media that the project would be renamed "Festa das Patroas 35%".

Why? Because another singer, Daisy Soares, already held the exclusive legal right to the brand "A Patroa". The defense argued that the spoken and written forms were different, and the INPI examiner understood that switching singular for plural was not enough to tell the two apart. The result: "As Patroas" was considered unregistrable, under item VI of article 124 of the industrial property law.

That happens because many people name the business first and only later find out whether it can be registered. The path runs backwards.

A tip from someone who has seen it go wrong: you can run a registration viability check for free. Go to the INPI site and read the criteria. Let us walk through them.

Choosing a brand name is not only a creative exercise, there are rules to the game. The name you choose has to:

• Have commercial strength and be distinctive;
• Have the domain and the social media handles available;
• Comply with the industrial property law.

For legal protection, the registration comes in four types:

• Word mark: protects the name alone;
• Figurative: protects the visual part alone;
• Composite: protects name and visuals together;
• Three dimensional: protects the packaging and the shape of the product.

The questions that come up during registration

The law is broad, it blocks the registration of many names, signs and expressions, and it keeps a separate list for famous marks. With that many rules, questions naturally appear along the way. Here are the main ones.

What are the basic rules of trademark registration?

In short: you cannot register official symbols as a trademark:

• Flags, coats of arms, medals, coins and monuments, national or foreign;
• Names and acronyms of government bodies, unless the body itself is applying;
• Official seals or guarantee stamps.

You also cannot register anything too generic or basic:

• An isolated letter, number, date or color, unless it carries a unique visual design;
• A common word that only describes the product or its quality, such as "frozen" for ice cream;
• A technical term from your own field;
• The common, basic shape of the product or the packaging.

Nor anything that already belongs to someone else:

• An imitation of an existing trademark, company name or business title that could cause confusion;
• A person's name, signature, famous nickname or face without authorization;
• A work protected by copyright, such as a book or a film, or somebody else's industrial design;
• The name or symbol of a famous sporting or cultural event, without permission;
• Copying in bad faith a mark that, given your profession, you should already know belonged to someone else.

Misleading or offensive signs are blocked too:

• A word or image against public morals, or that offends a person or a religion;
• False information that misleads the customer about the origin, material or quality of the product;
• A false geographic indication, such as calling a cheese made in one region by the name of another.

And finally, slogans and duplication:

• A phrase used as pure advertising, such as "the best price in town";
• Registering the same mark twice for the same product, with no change to the visuals.

Pay attention to this: article 195 of the industrial property law treats the improper use of a trademark as a crime. The penalty can reach three months to one year of detention, or a fine of up to 5% of the gross revenue of the last five years. It applies to word, figurative and three dimensional marks alike.

The name you choose also cannot be on the INPI list of famous marks. Those are marks that earned so much recognition that they became a commercial asset, protected by law across every field of activity, not only the original one. That is what article 125 of the industrial property law says.

INPI organizes every trademark into classes, 45 of them, and you do not have to memorize them one by one. It is simple: classes 1 to 34 are products, 35 to 45 are services. To find the class of your company, go to the INPI site, download the matching class guide and look for your segment.

Registering in one class protects that class and nothing else. If you manufacture the product and also sell it straight to the customer, you have to cover both ends. In clothing retail, for example, whoever makes their own pieces goes into class 25, which is product, and whoever sells, in a shop or under their own brand, also goes into class 35, which is commercial service. Covering one side leaves the other open for any competitor to use the same name. The two together give full protection. Think about the strategy before deciding where to register.

How long does trademark registration take?

The process takes 8 to 24 months. Any individual or company can apply. The time varies with the volume of open applications and the number of legal conflicts that appear along the way.

Is registering a trademark expensive?

First, something many people do not know: any individual or company can file their own application, alone, with no lawyer and no agent. If you have the time to study the process and fill everything in correctly, the cost comes down to the INPI fee.

The cost has two parts: the mandatory fee from the body and the fee of whoever represents you, if you choose to hire someone. Today INPI charges only an initial fee. Once the application is granted, the first ten year certificate is issued automatically.

The official amount is charged per class, and you will notice that each band has two different prices. The difference lies in how you describe what your brand sells. With the pre approved specification you pick terms from a list INPI has already validated, which makes the analysis faster and costs less. With free description you write your own wording, tailored to your business, which demands a more detailed analysis from the examiner and therefore costs twice as much.

With the 50% discount, for micro and small companies, individuals and non profits: R$ 440.00 with the pre approved specification, or R$ 860.00 with free description.

With no discount, for other companies: R$ 880.00 pre approved, or R$ 1,720.00 with free description.

Full exemption for people on the federal social register and for people with disabilities.

The fee of whoever handles the process for you usually sits between R$ 2,000.00 and R$ 3,000.00, and it can vary by up to 400% from one provider to another. Shop around, and prefer whoever has a lawyer or a qualified professional on the team. Doing it yourself saves that whole amount, and it also leaves the responsibility for following every stage entirely with you.

Watch out: if the application needs a defense, there are procedural costs on top of the legal fee. The real cost only becomes clear after a detailed analysis of every possible conflict against your mark. Check the full list in the INPI fee table.

Careful with the scams

As soon as you open the application, your email address becomes public. That is when scammers show up sending fake invoices in the name of the body. Do not pay.

A tip: INPI never sends an invoice by email. The fee is issued by the responsible representative, straight from the official site.

Which images and symbols cannot be registered as a trademark?

Monuments and flags are out. The law forbids direct or indirect reference to an official coat of arms or flag. Symbols carrying an official monument, such as Christ the Redeemer or the Statue of Liberty, are out too. There is no exception, however stylized the drawing is.

Which words cannot be registered as a trademark?

Descriptive or generic words are out. A common term, such as technology, pizza, supermarket or the name of the country, is unregistrable. The exception exists when the styling is strong enough, as it was with Pizza Hut and Magazine Luiza.

Can I register numbers as a trademark?

An isolated letter, number or date cannot be registered on its own. Again, strong styling opens an exception, as with Total 90 for football boots or the perfume 212.

Can I use the name of my children or relatives as a trademark?

If you are the legal guardian of the name, you can turn it into industrial property. If the name belongs to someone else, you need proof of their consent.

Can a color be registered as a trademark?

Brazilian law does not register a color mark, the kind made of a single isolated color. When the color is styled enough, you can secure exclusive commercial use of it. Tiffany blue is the classic example: it was registered in the Pantone system in 2001, under the name 1837 Blue, a reference to the year the jeweler was founded.

Can a refused application be overturned?

The law is strict, and the judgment of whoever analyzes it can be subjective. Even when registering a mark in a specific class looks impossible, the right legal argument can overturn it, including after a refusal. And if INPI refuses for good, a court action can still be filed so that the judiciary rules on the arguments.

To see it in practice, look at the Pulpi case. In application 921585632, the company fought for exclusive use of the name.

The INPI examiner argued that the mark was a descriptive, common expression and therefore unregistrable, under item VI of article 124 of the industrial property law. On appeal, the defense argued that although "pulp" translated directly is indeed descriptive, joining it with the letter "i" created a sound of its own, a neologism. In other words, "Pulpi" had enough identity to be registered.

The grant came out on 23 August 2022, in issue 2694 of the INPI journal. And where does empathy come into it? In the consistency of the argument that turned the mark into something legal and distinct.

The name Pulpi was inspired by the repositioning of McDonald's, which in 2019 became Méqui in Brazil, to get closer to the public. The insight was noticing that Brazilians tend to add an imaginary vowel when speaking English words: from "self" to "selfie", from "smartphone" to "smart fone".

Brands like Pulpi and Méqui build a more human and lasting relationship with the people who buy from them. They understood that respecting the particularities of people is also a business strategy.

That is it, business owner. I hope you now feel better prepared to register and protect your brand. All the best.