How to select a “super-strong” brand name
It is important to register your business or brand name as a trademark, as discussed in my previous blog on the number 1 intellectual property mistakes small businesses are still making.
What is a “strong brand name”?
People often select brand names that describe their goods or services. For example, the name “Reliable Plumbers” tells you that the services are plumbing services which are reliable.
When I talk about a “strong brand name” this is not what I am talking about at all. In fact, I am talking about virtually the opposite.
From a legal perspective, it is much easier to register a business name or brand name as a trademark if it is not descriptive. The reasoning behind this is that others in your industry might need to use those descriptive words. Names that are not descriptive are often referred to as “distinctive” because they help you to stand out from the crowd.
This is not to say that you should select a name that has no descriptive elements in it whatsoever. Something that hints at your goods or services is often acceptable for trademark registration.
While it is advisable to take advice as to whether your business or brand name is sufficiently distinctive at the start of your business, all is not lost if your name is fairly descriptive. Descriptive trademarks can sometimes be registered, by filing evidence of use or by adding a logo (which can result in your trademark protection being narrower than if you filed for a word-only trademark). However, the best option is to steer clear of brands that are too descriptive.
Choose something distinctive
A good example of a distinctive trademark is the “Apple” for computers, phones, and other electronic devices. No one else thought to use that name on computers until Apple Inc. did so. Anybody else now trying to brand their computer “Apple”, will clearly be infringing.
A distinctive trademark is often memorable as being unusual and can often be particularly successful if purchasers can associate a mental image with the trademark.
‘If possible, register your trade mark before you start trading’
Trademarks are generally registered on a “first come, first served” basis. If you do not register your trade mark quickly enough, you run the risk that a competitor might do so.
If someone else has got your business name registered as a trademark, the only way to get it removed is through the courts, and legal costs are likely to be in the region of $100 000 for a contested case. The outcome of litigation is never guaranteed, and you might end up losing the name anyway.
Make sure it does not already belong to somebody else
If somebody else has the same or similar business or brand name registered as a trademark your use of that name will amount to trademark infringement even if:
- you have that name registered as a business name,
- you used the name before the person registered the trademark,
- you invented the name.
Trademark registrations are territorial. For example, most Australian businesses registered trademarks in Australia only. If somebody else has the same or similar name registered as a trademark overseas, that usually does not stop you from using and registering it in Australia. However, if the owner of the overseas trade mark has actually used the trademark in Australia, they could oppose your trademark application. This happens fairly rare early, and generally only where the overseas trade mark owner is wanting to expand into Australia.
A super-strong trademark is one that can be, or already is, registered in your name as a trademark for your goods and services of interest, and preferably the goods or services that you are likely to trade in in the short to medium term.
Cathryn Warburton is an internationally award-winning solicitor, patent attorney, mentor, author, and speaker. She is The Legal Lioness with a passion for safeguarding her clients’ business and intellectual property interests. She founded Acacia Law when she realised that law firms run by old men were too inflexible to empower her to tailor her legal solution to each client’s needs. http://www.acacialaw.com
* Please note that this blog is provided for general informational purposes only. Each legal situation differs. Reading this blog cannot replace obtaining specific legal advice. We recommend that you obtain legal advice for your specific situation.
NZ & AU Patent Attorney (Partner)
QLD Solicitor (Director, Acacia Legal Pty Ltd)*
Tel: +61 7 3418 0974
Fax: +61 7 3014 8765