How to Choose a Trademark

Coming up with a unique and descriptive trademark design, perfect for your brand, and eligible for registration can be difficult. To be able to design the ideal trademark you might try combining a number of different elements. Elements that, on their own, would make weak trademarks, but once combined with other elements, can come together to make a very strong trademark. The following categories of trademarks are some of the examples that you might find yourself considering, and the reasons you should or shouldn’t choose them.

Names of People

When choosing a trademark for the first time, it may seem logical to choose your own family name or the name of the person who started the business as your company’s mark. Bear in mind that for a trademark to be eligible for registration it must be classified as ‘uncommon’. In order to fit that classification, there would have to be very few families throughout Australia with the same name. This type of name may also be unsuitable for trademark registration unless you can show proof that you’ve used the trademark consistently, or prove the name has a secondary connotation.

Descriptive Marks

A descriptive word is one that describes a function, characteristic, element, purpose or feature of a service or product. Generally, these marks are difficult to register.

There are two types of descriptive trademarks you cannot register:

1. Deceptively Misleading in Description: For a descriptive mark to be classed as deceptive, it must have the potential to mislead consumers into believing that the product or service possesses qualities that it does not have. These deceptive names may include: suggestions that the product was made in a manner different to the way it was actually made; suggestions the product was made in a country different to the country it was made in; or suggestions that a product contains false elements of one kind or more.

2. Clearly Descriptive Trademarks: For a mark to be clearly descriptive, it must be related to a character, material or quality that is associated with the product or service, or it must describe a function, trait, or feature of a product or service. To ascertain whether a word or a phrase is clearly descriptive, the examiner will go off the first impression of the words. They don’t spend the time conducting in-depth analysis of the potential meanings of the word or phrase.

While you’re going through the process of choosing a trademark, keep in mind that on their own, descriptive marks are generally weak. However, when combined with other types of marks they can create a strong, yet descriptive, trademark.

Confusing Trademarks

Choosing a mark identical to, or so similar to another trademark that it would cause confusion in the marketplace, would not be eligible for registration. For example, if your business name was ‘Cat Barn’, you could not register it if there was another business that owned the name ‘Cat Barn’. An alternate spelling, such as ‘Kat Barn’, would be considered to be confusingly similar, and therefore not eligible for registration. To find marks similar or identical to the one you’re considering, you can perform a search of the Australian trademark databases.

Generic Words

A success trademark needs to be unique and distinctive: therefore, you cannot choose any form of generic terms. The definition of a generic word is a common word used to describe a service or product, such as ‘paint’, ‘carpet’ or ‘pear’. Under Australian trademark law, it is impossible to trademark generic terms. It is however, possible to use a generic word to trademark a product that’s completely unrelated to that particular word. For example, it is not possible for you to use the word ‘apple’ for a business that sells apples, but an electronics company has very successfully used ‘Apple’ to trademark a line of phones, tablets and computers.

Acronyms and Numbers

Examples of distinctive trademark acronyms include: CTV, ATT and IBM but their success is may be largely due to the huge amount of money their owners have invested into them. Generally, it is a lot easier for consumers to remember words and particularly colourful language than it is for them to recall acronyms, so think carefully before choosing an acronym for your trademark. The same applies to the use of numbers as trademarks; they can be difficult to remember and may not indicate any feature or aspect of a product or service. You want customers to come to associate your trademark with your goods or services and this is more difficult to achieve with a trademark consisting only of numbers.

Invented Words

Words you invent tend to be stronger trademarks. Invented words are absolutely unique to your business and brand – making them memorable. Some examples of made up company names, that hugely recognised brands are Kodak, Spandex and Exxon. Consider making up your own trademark name as these names often provide for an easier registration process as well as ensuring absolute distinctiveness to your goods or services.

The More Distinctive the Better

The easiest names to defend and enforce are those marks that are very unique and distinctive. During the design process, always attempt to combine words or other elements that are or will be unique to your business. Before proceeding, its best to do as much research as possible to determine the names of businesses within your marketplace, so you can choose a name distinctly different from the competition.

We recommend using a trade marks attorney to assist you in researching names, as well as providing advice as to whether your trademark would be eligible for registration – including any changes that may need to be made.

Call Mark My Words Trademark Services for all your trademark queries today.

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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