Choosing a “good” trademark (advice from a lawyer) – Trademark


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Thinking of a new brand name? It is possible that the name you plan to use for your new business may not be copyrightable or that its use could land you in litigation.

There is a lot at stake when making this decision. You may find yourself in a position where you have spent a lot of money and effort on brand recognition only to find that your mark cannot be registered, someone has already adopted the name, or the mark is not registered. is not enforceable.

It goes without saying that having a registered trademark is invaluable to any business. Some of the benefits are highlighted below.

  1. Registration provides an easy remedy against infringement.

  2. It helps consumers identify your products/services and your brand.

  3. It has a deterrent effect on potential offenders.

  4. Trademarks can increase in value over time. The more your company’s reputation grows, the more valuable your brand will be.

  5. Trademarks may be sold, licensed or used as security.

  6. Registration allows a trademark owner or licensee to use the words “registered trademark” or an abbreviation thereof or the internationally recognized symbol ® in conjunction with the trademark.

  7. Trademark protection is renewable. In most cases, you benefit from protection for a period of 10 years.

  8. Registration provides a At first glance right to use the mark concerned.

Choosing the right brand takes a lot of thought. As trademark agents, we are often confronted with sometimes disappointing trademarks. With the above in mind, how to choose a good brand?

In order to choose a good brand, we must understand the basic requirements of it, namely:

a. Your brand should be able to distinguish your products/services from those of others.
b. Your mark must not conflict with any prior registered marks or marks used in commerce.

When we deal with the first requirement, we consider 5 different categories of brands.

  1. INVENTED/FANTASY BRANDS – a fanciful mark is a coined or coined term that had no meaning prior to its use as a mark. Some examples include XEROX, KODAK, SKYPE, ADIDAS and ROLEX. In most cases, it is easy to obtain registration of these types of marks, when they are relatively available. Of course, with fancy brands or invented terms, greater marketing efforts may be needed to promote your products or services, especially in the early stages of your business when most consumers don’t know who you are or what you are. you have to offer.

2. ARBITRARY TRADEMARKS – these are trademarks that already exist but are used in a way that is unrelated to its meaning or your business. A classic example of this is APPLE for computers. Clearly, iPhones and laptops have nothing to do with fruit or cider. Other examples include SHELL for service stations and AMAZON Where GUMTREE for online markets. Again, these types of brands come with increased marketing efforts to promote your business, because the public won’t immediately know what you’re selling or what service you’ll be offering.

3. SUGGESTIVE MARKS – a suggestive mark alludes to the type of goods or services you offer or the quality of these. Examples of these marks include, NETFLIX (films (“films”) ordered online) and MICROSOFT (suggest software for small computers). Suggestive marks are also generally good for branding purposes as they are often catchy and clever and immediately inform the consumer of the products/services they are interested in. As long as they are not entirely descriptive of your products/services, they are excellent trademarks.

The above types of marks are inherently distinctive marks – they are among the easiest to protect.

4. DESCRIPTIVE TERMS – these marks simply describe the products or services that you offer. An example of this is COLD MILK for dairy products. These types of marks would normally not meet the first requirement in a) above. However, all is not lost. If you have adopted a descriptive mark, you may still be able to protect it by showing that it has acquired distinctiveness through use.

5. GENERAL TERMS – these are brands that are understood by the public as Common term for a product or service. For example, the word “Chocolatewould be generic for chocolate bars. Try to steer clear of these terms when choosing a brand name.

Ultimately, the strength of a brand also depends on how consumers associate your brand with your products and services compared to others. Memorization and contextuality are essential.

The second requirement, in b) above, is whether the mark is available for registration, relative to other marks on the register.

To help us determine if you meet this requirement, we perform a trademark search before filing an application. Research is important because it helps us determine if adopting your brand is likely to cause conflict.

It’s best to check this before you jump into the business development phase, choose a brand, become emotionally attached to it, and invest a lot of time, effort and money in it, only to find that your brand is infringing existing rights.

Here are some additional tips for those of you who are still in the design phase and can’t settle for a brand name.

  1. Consider inventing a new word. Pharmaceutical companies tend to take this approach, e.g. PROZAC and VIAGRA.

  2. Combine two existing words and create a new one. A good example is the brand YOUTUBE. It understands the word YOU and TUBE and in doing so creates the idea of ​​watching something of your own. It’s authoritative and catchy.

  3. Consider combining descriptive or generic words with arbitrary marks. Examples of this include, PANDA-EXPRESS and HUNGER LION.

  4. Consider words that invoke a certain emotion or call to action. For instance, GEEK TEAM for IT services or ROAD RAGE for road safety services. These examples have desirable meanings but are not descriptive.

With all that is said and done…. NOT protecting your IP (according to this lawyer) is a bad business decision.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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