Do you need to know how to choose a trademark? It can be hard to design a trademark that is simultaneously distinct and descriptive enough to be eligible for registration. In order to design a truly unique trademark, you might decide to combine a number of elements that, on their own, make weak trademarks, but combined make a strong mark. The following categories of trademarks are some of the few that you might choose from.
How to choose a Trademark – Names of People
When learning how to choose a trademark, you might choose to use a founder’s name or your own family name as your business’s trademark. However, in order for this name to qualify for registration, it must be classed as ‘uncommon’, meaning that there are very few families bearing this name within Australia. Similarly, this name may be unsuitable for trademark registration unless you can prove that you have used this mark consistently and often, or that the name has secondary meaning.
How to choose a Trademark – Descriptive Marks
Generally, when thinking about how to choose a trademark, a descriptive word is one that describes a function, purpose, feature, characteristic, or element of a product or service. These marks are usually difficult to register. There are two types of unregistrable descriptive trademarks:
- Clearly Descriptive Trademarks: If a mark is clearly descriptive, it must be related to a quality, character, or material that is a part of a product or service, or it must describe a feature, trait, or function of a product or service. To determine whether a word or a phrase is clearly descriptive, an examiner will go off the immediate impression of the words, rather than an in-depth analysis of the potential meanings of the word or phrase.
- Deceptively Mis-Descriptive: For a descriptive mark to be deceptive, it must lead consumers to believe that the product or service possesses qualities that it does not have. These deceptive names might include:
- Suggestions that the product was manufactured in a different country to where it was actually made
- Suggestions that the product was made in a certain way when it was made differently
- Suggestions that a product contains a certain element
When thinking about how to choose a trademark, descriptive marks are generally weak on their own, however they can be combined with other types of marks to create a strong, yet descriptive, trademark.
How to choose a Trademark – Confusing Trademarks
If your mark is identical to or confusingly similar with another trademark, it is not eligible for registration. For example, if your business name was ‘Couch King’, you could not register it if there was another business that owned the name ‘Couch King’. An alternate spelling, such as ‘Kouch King’, would be deemed confusingly similar, and therefore would be unregistrable. You can perform a search of the Australian trademark databases to find marks that are similar or identical to your own.
How to choose a Trademark – Generic Words
Your trademark should be unique and distinctive: therefore, generic terms are inappropriate to trademark. A generic word is a common word used to describe a product or service, such as ‘carpet’, ‘ring’, or ‘apple’. Australian trademark law has made it impossible to trademark generic terms: however, you might use a generic word to trademark a product that is completely unrelated to that word. For example, you could not use the word ‘apple’ for an apple-selling business, but an electronics company has very successfully used ‘Apple’ to trademark a line of phones, computers, and tablets.
How to choose a Trademark – Acronyms and Numbers
IBM, CTV, and ATT are all examples of distinctive trademarked acronyms: however, these are only successful due to the huge monetary investments their owners poured into them. Acronyms are generally difficult for consumers to recall, while words, particularly colourful language, are much more memorable.
Numbers make similarly poor trademarks as they are difficult to remember and do not usually describe any aspect or feature of a product or service. Consumers find it hard to associate a numbered company name with the company behind it.
How to choose a Trademark – Invented Words
Invented words are generally strong trademarks, as they are completely unique to your business and memorable in their strangeness. For example, Spandex, Kodak, and Exxon are all made-up words, but widely recognised brands. Invented words made good trademarks as they are not merely descriptive and they tend to be distinctive.
How to choose a Trademark – Plant or Animal Names
The use of plant or animal names in conjunction with unrelated products tends to be a successful marketing ploy, because these names can convey their own images whilst still being distinctive. Apple Computers is one example: Tiger Direct and Ford Mustang are two other widely known trademarked names.
How to choose a Trademark – The More Distinctive, The Better
The most easily defendable names are those that are truly unique and distinctive. When you are designing your trademark, try to combine words that are both descriptive and imaginative, whilst also being distinctive to your business. Conduct some market research to identify the names of companies within your marketplace, and steer clear of using similar names or marketing ploys. A trademark professional can assist you in your research, and can also provide you with advise of whether your mark is eligible for registration or whether you need to make some changes.
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.