Choosing a trademark: 3 top tips
It can be a disaster when others use your trademark without your permission, especially if you have spent substantial time, effort, and money so that your products are recognised and asked for by name.
Fortunately, a registered trademark can be a very powerful way to protect your unique brand. Choosing the right trademark can have a significant impact on the strength of your trademark before the law. Here are some things to consider when you choose your trademark, to help you get the strongest protection.
Firstly, the distinctiveness of the trademark with respect to the goods that the trademark is to be used with is very important. From a legal point of view, the purpose of a trademark is to distinguish your goods or services from those provided by others. The more distinctive your trademark is the more likely the trademark will be allowed by the trademarks office and the more likely it is that you will be able to enforce your trade mark rights against those who use the trademark without your permission.
The strongest registered trademarks are those that are imaginative (otherwise known as fanciful or coined trade marks). If the trademark is imaginative and has no meaning then it is highly distinctive. These trademarks cannot be found in dictionaries and are generally the most enforceable. Examples of trademarks in this category include EXXON, KODAK, GOOGLE, EBAY, and BOSE.
It is generally considered that after fanciful and coined trademarks, arbitrary trademarks are the next most desirable. An arbitrary trademark may have a dictionary definition, however, it has no meaning in the context of the goods or services with which it is used. For example, the trademark APPLE with respect to computers is an arbitrary trademark. Arbitrary trademarks are generally good candidates for registration, however they cannot be used in relation to products and services which may be described by the trademark, for example the trademark APPLE cannot be used in relation to the fruit.
Also generally acceptable are marks that are suggestive. These are, however, more likely to be problematic during registration and enforcement then any one of fanciful, coined and arbitrary trademarks. For example, AIRBUS for aeroplanes is suggestive but because it is not descriptive of the good with which it is associated, it still distinguishes.
Trademarks that are generally not acceptable include those which are merely descriptive. Examples include WARM in relation to clothing or FAST in relation to cars. It may be possible to register a descriptive trademark if it has acquired distinctiveness through use. This is, however, a relatively weak position that takes time to build up. The selection of a fanciful, coined, or suggestive trademark is a better approach.
Generic terms – that is terms that are common with respect to the good or service – are not acceptable because they cannot distinguish. An example is CAR for automobiles. Names, surnames, and geographical locations are also generally problematic.
Secondly, trademarks that are similar or identical to existing trademarks should be avoided. It is worthwhile doing a search for existing trademarks in those countries for which you may now or in the future wish to trade or register the trademark in. A trademark attorney can assist in conducting the search and determining if a proposed trademark is too similar to existing trademarks.
Thirdly, it is important to avoid trademarks which have awkward or plainly undesirable meaning in other languages. For example, NOVA in Spanish means “doesn’t go”, and consequently GENERAL MOTORS chose not to use this trademark in Spain for their cars. MIST has been used in relation to deodorants. Unfortunately, in German mist means dung. It may be necessary to review trademarks over time because undesirable associations may develop.
Other things to consider when selecting a trademark include the ease of spelling, reading, pronouncing and remembering the trademark in each relevant language, and whether the trademark creates confusion as to the nature of the product.
For further information contact Justin Blows.
+61 (0)410 013 089