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A Trademark Mistake I Myself Made

A Trademark Mistake I Myself Made

Today, I’ll let you in on a mistake I made early on in my business. It highlights an overlooked aspect of trademarks to be aware of.

When I started my law firm I hadn’t worked in private practice since qualifying as a solicitor. The prevailing wisdom, such as from this Law Society book, was to start as a general practice.

My previous job was as an in-house lawyer at Reuters for 5 years. I was a business lawyer. The range of work I did included employment law, intellectual property, media law etc.

But I had quite a long career break to raise my daughters. So, I knew nothing about the small business world and whether I’d be able to attract enough commercial law work.

Back in 2004, it wasn’t so common for lawyers to specialise as it is nowadays. So, the advice to be a general practice didn't sound as odd as it does today.

A lot else was different in 2004. For example, the trademark registers were not searchable online. You had to visit the Patent Office (as it was then called) in person, to conduct a trademark search. It was far from the quick search you can do today.

Also, solicitors didn’t do trademark registration work. Trademark attorneys did such work. At Reuters trademark agents handled searches for us.

That might be why I decided it was alright to use the name A1 Law for a general practice law firm. I'd spotted A1 Trademarks on the registers and believed it would be alright. And it was.

So, I went with the name A1 Law. after obtaining PI insurance cover, and having a website and logo designed.

Loads of conveyancing work came my way immediately. It arrived from friends and family, as well as from people searching for local law firms. I also got probate matters, landlord and tenant issues, and copyright and licensing work to deal with. 

A year or so into the business, I realised it wasn't tenable to handle all these areas of work. Many of them, such as conveyancing, required specialist systems to handle the paperwork. It just wasn’t profitable to offer such a broad range of services.

So, I decided to niche. I changed the website's focus to intellectual property law work. And I began turning all other work down.

And that’s when I received a cease-and-desist letter from A1 Trademarks.

I'd forgotten their existence when I decided to niche. As I wanted to provide the A-Z of IP rights under one roof I was offering trademarks too...

I should have foreseen the problem from the beginning. In hindsight the scope for overlap was strong enough to point to choosing a different name.

But failing to reassess the suitability of the name A1 Law for my new focus was a serious mistake. It’s essential to check the trademark position whenever you change your focus or expand into new areas.

That’s why I’m sharing this mistake with you today. It’s one reason to take a long-term view when you initially do due diligence on a name. Think far ahead. Don’t just consider your short-term plans. You're then more likely to choose a name that can see you through to the future.

A mistake around trademarks can be costly, Rebranding is both disruptive and expensive. So, be sure to do effective due diligence when you’re choosing names in business.

If you haven’t yet had a trademark search of the name you’re using this is a service we provide, so do get in touch.