Designing a registrable trademark, or business name can be a difficult task. Hiring marketing and advertising professionals can be costly: you might also invest money in air time for radio or television; printed media; catalogues or brochures. All of these things will ensure that your brand is both distinguishable and well-recognised: however, the money you have spent developing your mark, and the time you have spent circulating it, will not guarantee that it is eligible for trademark registration. Regardless of what you invest in your mark, an IP Australia examiner might still find grounds for the rejection of your application.
Choosing a registrable mark is complicated. There are so many pre-existing trademarks that designing a truly unique and recognisable mark seems almost impossible. The following guidelines, however, should give you an idea of what makes a strong, distinguishable, registrable trademark.
Consult an Trademark Expert Before You Apply
You should always consult a trademark professional before you submit your application for trademark registration. A trademark professional can advise you on whether your mark is eligible for registration, or whether you need to make changes to your mark. Our trademark experts are experienced in Australian trademark legislation, and can offer you a realistic assessment of the registrability of your mark. Contact us to book a consultation.
An experienced trademark professional can help you assess the strength of your trademark. You should design your mark in accordance with some of the following elements of strength to ensure that it is eligible for trademark registration.
- Fanciful Language: A fanciful trademark usually consists of a made-up word. This word functions as the trademark, but does not necessarily describe it. For example, Pepsi® is a completely made-up word: it does not exist in any language, but it was chosen as the trademark for a carbonated drink.
- Arbitrary Marks: An arbitrary mark is a dissociative word used to distinguish products or services. You can apply a word that has no relation to the nature of your business to your products and services. For example, ‘Apple’ is used to identify electronic devices, and yet has nothing to do with those products. This is a strong trademark because it does not describe a quality or characteristic of the product, and therefore is unlikely to be confused with the products of competitors.
- Suggestive Marks: A suggestive trademark is a word that describes the nature of the products or services in a suggestive manner. The consumer must use imagination or further thought to understand the link between the name and the product: they also apply to qualities entailed by the mark to the nature of the product or service. For example, the Greyhound® logo entails that the bus service is sleek and fast as a racing greyhound. Suggestive marks are strong not only because they can be unique, but also because they leave the consumer with positive impressions of the product or service.
These types of trademarks are generally weaker than the marks specified above. A clever marketing team can work around the negative aspects of these types of trademarks: just because they are weaker does not mean that they should never be used. For example, descriptive language can make a strong trademark, so long as it is used in conjunction with other words. Consult a trademark expert before you file your trademark application, particularly if your mark contains any of the following elements.
- Descriptive Marks: A descriptive trademark generally contains information that is directly related to the product or service, such as an ingredient, quality, characteristic, function, purpose, or feature. Descriptive marks are useful in that they provide consumers with the ease of recognition, they are difficult to protect and are more likely to conflict with other marks. You will have to prove extensive and long-standing use of your mark in order to successfully register it. You are also more likely to encounter contest or legal action during the application process should your mark be purely descriptive.
- Generic Marks: Generic terms are common words used to describe your products and services. These are not registrable as trademarks as they would hinder others from rightfully using common words for their own products and services, granting you a monopoly of the market. These also make for a weak trademark, as consumers are unable to recognise the trader behind the products and services.
- Prohibited Marks: You would be unsuccessful in your application if you attempted to register any of the following:
- Official government marks
- Marks associated with the royal family
- Badges or crests used by the Australian Armed Forces
- Emblems and names used by the Red Cross or the United Nations
- The flags or symbols of other nations
- Any mark that is obscene, immoral, or otherwise inappropriate
- Any mark that falsely implies a connection with any living individual
- A portrait or a signature of an individual alive or dead within the last 30 years
Conduct a Trademark Search
Once you have a strong, potentially registrable trademark, you need to conduct a trademark search of all of the relevant Australian databases to ensure that your mark does not conflict with the marks of registered trademark holders. Bear in mind that your mark does not have to match another mark to infringe upon it: if your mark is even similar to another mark in a single element, you risk infringing the rights of that trademark owner.
Register Your Domain Name
Mastering online advertising and marketing is essential in today’s technological word. You need to ensure that an appropriate domain name is available for you to trademark. Ensure that your domain name matches your other trademarks: refrain from inserting previously unused symbols such as hyphens or dashes. You should also ensure that your domain name is spelt correctly before you register it. You should also register your domain name with the .net or .org extensions to ensure that a ‘cybersquatter’ will not register your name with those extensions before you, and thereby prevent you from using your own domain name.
Register Your Trademark to Ensure Protection
Once you have a registrable trademark, you should apply for registration as soon as possible. A trademark expert can assist you in filing your application, as well as navigating the rest of the application process. With a trademark professional, you can avoid the common pitfalls of the registration process.
Your trademark is one of your most valuable assets: it establishes your goodwill and reputation for service with consumers. It is essential that you select a strong, registrable trademark, and protect your intellectual property rights with registration.
Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.
Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.