How Do I Choose a Trade Mark?

To answer the question, it’s important to first understand what a trade mark is. A trade mark is effectively a sign that’s used to distinguish a trader’s goods or services from those of their competitors, and many traders use a trade mark which consists of a word or a logo. However, there are many different kinds of signs that can also function just as well as trademarks.

They are sometimes referred to as non traditional signs and they include things like shapes, colours and even smells. Think of the shape of the Coca-Cola contoured bottle. That is a trade mark. Colours, like the specific shades of purple that are used by Cadbury for their chocolate products can also function as trade marks.

Even sounds like the MGM Studios lion’s roar that you sometimes hear when you go to the movies, that’s a trade mark. Even scents can be trade marks although finding registered scent marks are few and far between. But that’s a possibility as well. It can function as a trade mark in certain sectors.

The feature that all trade marks do have in common is that they are all used to communicate to the consumer that the products or services that they use in relation to have a common trade source and the owner of that trade mark has control over the quality or the standard of those goods or services.

When a business comes to decide on a new trade mark for its goods or services, it’s important that they select a trade mark that is unique and distinctive. One that will function as a trade mark because it is inherently adapted to distinguish your goods or services from others. You don’t want consumers of your goods or your services to be confused between your trade mark and that of another competitor. So, for instance, if you choose a term that is descriptive, then it likely won’t function as a trade mark.

Can I Use My Own Name as a Trade Mark?

It’s very common for traders to choose their own surname or the surname of the person who started the business as their trade mark. And that’s something that makes sense. And historically, probably the earliest trademarks going back hundreds of years were indeed the names of the traders. However, in these days, when we’ve got large populations around the world, surnames that are commonplace are not necessarily eligible to be registered because, understandably, there might be a lot of other traders who share the same surname and therefore what I would wish to use their surname as a trade mark as well.

It cause confusion and it doesn’t really do the job of distinguishing your goods and services. For example, if you’re called Smith. It might not be a great idea to use that as your trade mark.

Other Challenging Types of Trade Marks

Another common kind of mark that we come across are descriptive marks. Unfortunately, it is common for traders to choose a descriptive term as a trade mark, which is a problem because they don’t function very well as trade marks because effectively what they’re doing is describing a characteristic function or perhaps a purpose or a feature of the goods or the services that they’re used in relation to. And of course, those are words that other traders offering those goods or services would legitimately wish to use to describe their own goods or services.

For the same reason, consumers may not identify those sorts of words as trade marks, unless you market them years and spend huge amounts of money to educate the consumer that it’s a trade mark. For example, a trade mark of Melbourne’s Hairdressers is entirely descriptive as it indicates a hairdressing service operating in Melbourne. Other hairdressers located in Melbourne should be allowed to say that they are Melbourne Hairdressers.

Generally speaking, if you’re at the drawing board, we would recommend not to choose a descriptive term as a trade mark because it will be difficult to get it to do the job of distinguishing your goods or services without spending a huge amount on marketing. It is challenging to secure registration of descriptive names unless you can provide evidence that shows your name does or can do the job of distinguishing those goods or services. Even if successful in registration, you could be stuck with trying to enforce that generic trade mark going forward against third parties, who again, legitimately wish to use a descriptive term like that. So not a good idea.

Could you give me an example?

If you, as a business are really keen to include a descriptive or elaborate term within your trademark, you can perhaps do so if you combine it with additional elements, whether that be other non descriptive words, or perhaps even very eye catching graphics. The overall effect of combining multiple elements can actually result in a strong and distinctive mark.

Another common kind of mark that we see are suggestive marks. These are marks that don’t actually describe the goods or services, but allude to them. An example of that would be Mr Sheen for furniture polish that is alluding to the purpose or the effect of the product when it’s used, but it doesn’t directly describe it. A cleverly formulated suggestive mark can be very strong and marketing staff certainly seem to love these sorts of marks.

There’s not necessarily anything wrong with choosing a suggestive mark, as long as it’s cleverly suggestive and not too obvious or commonplace. It’s just important to ensure that you adopt one that perhaps isn’t one that’s already in use and isn’t descriptive.

What’s the Best Type of Trade Mark to Choose?

Our favourites are usually invented words. These are essentially coined terms that are completely unique to a particular business. And for that reason, they are, generally speaking, very strong brands because they’re memorable. Some examples of invented word marks are Kodak, Spandex, and Exxon, which you have no doubt heard. When people want to adopt an invented word, we consider that to be perhaps the easiest way to obtain a mark that you can be sure is available for registration, if you have invented the term and it’s not in use by anybody else.

Jacqui Pryor

Jacqui is a registered trade marks attorney with the Trans-Tasman IP Attorneys Board and is the founder and owner of Mark My Words Trademark Services Pty Ltd.

After being introduced to the world of trade marks in one of her first jobs after high school, Jacqui discovered she had a deep passion and interest for all things to do with protecting brands and intellectual property. She completed a Graduate Certificate in Trade Mark Law and Practices as well as a Diploma in Business Management and then set up her own business in 2011.

Her motivation for starting Mark My Words was to support SMEs which typically couldn’t afford such a service and while the company has grown in both size and reputation over the years, she has remained true to her founding principles of providing professional, friendly, reliable and affordable trade mark services to all.

Mark My Words now has a client list that spans businesses of all sizes across a range of industries. It provides advice and assistance on all types of complex trade mark registrations, infringements and opposition matters both in Australia as well as overseas.

Jacqui’s wealth of experience, broad range of professional qualifications and her ongoing participation in industry forums and networking platforms keeps her at the forefront of developments in the global trade mark arena. Her expertise in her field has also led to several nominations as a top individual trademark attorney by the World Trademark Review - the world’s leading trademark intelligence platform.

To keep up to date with the latest in the field of trade marks, follow Jacqui and MMW Trademark Services on Facebook.

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