Interview with our founder, Jacqui Pryor
We sat down with our founder, Jacqui Pryor to find out what she loves most about running her own business and to bust some myths about the trademark process.
What inspired you to start MMW Trademarks?
I had worked in the trade mark field for 10+ years before starting MMW Trademarks and over that time realised there were very few companies providing trade mark services with a focus on small and start up businesses. I wanted to offer a quality service without the price-tag of the larger firms. This has changed over the years, but in 2011 that was a real motivation for me starting Mark My Words Trademark Services.
A lot of cases are confidential so the details cannot be shared. What I can say is that we have had a good level of success in overcoming adverse reports issued by the trade marks office and achieving registrations for our clients despite those hurdles. We’ve also been fortunate to have some good wins before hearing officers in the context of trade mark removal matters and opposition matters.
What do you believe sets MMW Trademarks apart from other firms in the industry?
We have always strived to provide a friendly and reliable service, with clear and easy to follow advice. We spend a lot of time with our clients on non-billable matters, which allows us to ensure we understand our clients’ needs and provide the best service for those needs.
How do you stay updated with the constantly evolving trademark laws and regulations?
As registered trade marks attorneys we are mandated to complete continuing professional development each year. This involves a range of activities, including seminars – where, most years there will be presentations on developments in trade mark legislation, as well as any notable court cases. We also ensure we receive relevant updates from the trade mark office to be across new developments, and, also take time to read decisions/judgements issued by the trade marks office and the Courts.
Can you describe the process MMW Trademarks follows to ensure a successful trademark registration for clients?
Often the likelihood of success is case by case and comes down to the particular trade mark involved and circumstances surrounding the use of that trade mark. We conduct preliminary searches, at no charge, as a first step, which gives a glimpse at the landscape and allows us to form an opinion around the chances of success. We are upfront and honest. If we don’t think the client’s trade mark is likely to be approved we will say so from the get go. Some trade marks enjoy a smooth process, with no issues. If a client has used a trade mark for a period of time then we can help overcome any adverse reports issued by the trade mark office by correctly preparing and filing evidence of use.
What are some common misconceptions businesses have about trademarks?
That they don’t need to register their trade marks; that a business name is adequate to ensure ‘ownership’ and rights to the use of a name; that once a trade mark is registered they can stop anyone/everyone using a similar name ‘full stop’, which is not always the case.
How important is trademark monitoring and enforcement, and what strategies do you employ to protect your clients’ trademarks?
I think it’s very important. We offer a monitoring service to clients, which will flag similar trade marks if accepted by the trade mark office, thus providing a client the chance to object if that mark is a concern. We also recommend clients set up Google alerts on their brand which can help alert them to potential infringements.
The one that comes to mind is perhaps due to the rise of AI technology in that there are a few websites out there now offering trade mark registration services, which seem to essentially ‘plug in’ to the trade mark office, so, not necessarily providing trade mark attorney services nor providing recommendations on best protection – more like a ‘DIY’ service. Businesses that are familiar with the process and nuances around classes and ownership may be fine to use those systems, but, those that are less familiar may be best to seek assistance from a registered trade marks attorney or IP lawyer.
What advice would you give to a new business owner looking to register their first trademark?
Always conduct a trade mark search as a first step, particularly if the brand/name/logo is new. This can be done by the business owner themselves, or by a trade marks attorney/IP firm. Do as much homework as you can to best understand the classes of goods and services and the legalities around ownership. This last one is particularly important for businesses that may have moved from sole trader to company structure without necessarily documenting a proper transfer of unregistered trade marks.
How does MMW Trademarks approach international trademark registrations, and what challenges are commonly faced in this area?
Where viable we often file international applications under the Madrid Protocol, which can be a cost effective method for clients that require protection in multiple territories. Challenges can be around cost and also pre-filing searches so we will often suggest focus on the countries of immediate need first, and expand from there.
What motivated you to pursue a career in trademark law?
My first job in the trade mark space was an administrative role. That role opened my eyes to trade mark/IP law and I realised I really enjoyed it. After years in an admin role, followed by a few years in a consultative position I decided the time was right to study and obtain my Graduate Certificate in Trade Mark Law and Process and then registered as a trade marks attorney.
What do you enjoy most about your job?
My clients! The nature of my job means I get to speak with people from so many different industries and backgrounds it’s always interesting, and, with trade mark registration taking as long as it does (sometimes with bumps along the way), I feel like we kind of go on the journey together, and, I love doing that – particularly seeing/hearing the clients’ joy when a trade mark finally gets its final certificate of registration.
(And, despite being a pretty nice person, from an academic perspective I quite enjoy trade mark opposition matters!)
The first time I participated in an opposition proceeding before the trade marks office that went all the way to a decision and we won! It was nerve wracking doing something for the first time, which, in a lot of ways quite a technical/academic exercise so to get the win was a great feeling.
How do you balance your professional responsibilities with your personal life?
It can be tricky that’s for sure. When I first started my company I worked from home and 18 months later my daughter was born. Back then, as the company was quite new it was easy to be flexible and balance business and personal lives. As my daughter, and the business grew, managing that balance changed. I now (intentionally) rent an office across the road from her primary school. This allows me to have maximum work hours during school hours. In a deadline heavy profession it is sometimes impossible to just leave things until the following day so I try and spend a bit of time each afternoon on ‘personal life’ things, before heading back to the laptop in the evenings. I don’t, however, work on weekends unless absolutely necessary and I (might be the last person on the planet to say this) don’t have work emails set up on my phone so once I am done on the computer for the day I am not distracted with seeing emails come through on the phone!
What qualities do you believe are essential for someone to succeed in the field of trademark law?
Another tricky one and answers could vary depending on who you ask. I think honesty and clear communication skills are critical qualities to work in this space effectively. There are so many small businesses these days, and more starting every day. Being honest/upfront with any advice (particularly where we can see the trade mark the business wishes to register will be challenging or impossible) is a must in my mind. The area of trade mark law is often complex, and, there are various aspects that can be quite nuanced so being able to communicate advice and information clearly and in ‘easy to understand’ language is also an important quality.
What do you like to do in your free time to unwind?
With the risk of sounding a bit cliché, if I have proper wind down time I am not opposed to “Netflix and Chill”. I do enjoy having time on the weekends to read, spend time with family and attend my daughter’s soccer games.
How do you stay motivated and inspired in your work?
Once again, my clients. The trade mark nerd in me is inspired by reading trade mark office decisions/court judgements on trade mark ‘stuff’ – I find it so interesting. The non-trade mark nerd in me is motivated and inspired by my clients. I am very lucky that my profession means I am constantly connecting with people who are often speaking to me because they’ve come up with something new – a new product, a new brand, a new art piece, a new concept etc so it’s quite motivating to hear these stories and see them come to fruition.
I am not sure that I can. There have been a few text books back in study days, and like most in the profession Shanahan’s Australian Law of Trade Marks and Passing Off holds a prominent position on the bookshelf. I am not sure these are necessarily influential though…
What is the most rewarding aspect of running MMW Trademarks?
Am I allowed to say clients again? I really am blessed to have had pretty amazing clients over the years. Like most businesses there have been a few challenging clients, but the vast majority are great to work with.
It is certainly rewarding, professionally, to have a challenging case and successfully overcome the issues – which could be an infringement matter being resolved favourably for a client, or obtaining registration of a ‘hard to register’ trade mark or succeeding in an opposition proceeding – but certainly a nice feeling to get the win in those cases.
Where do you see MMW Trademarks in the next five years?
By then my daughter will be in secondary school, so clearly I’ll need to relocate so my office is still across the road 😉 We are very fortunate that, somehow, the Covid-19 pandemic saw our business increase and that does not seem to have slowed down. Currently we are a team of 4 (2 attorneys and 2 support members) so I hope to see the team grow in the next 5 years but still remaining true to the original purpose of starting my business – to provide friendly, reliable and cost effective quality services.
