Trademarks – Tips for choosing the right trademark

31/07/2017

The information below provides some general information on matters to consider when selecting a trademark.

Introduction

Selecting a brand/trade mark for your new product or business can be challenging, but if you get it right it can also be rewarding, lower the risk of future legal disputes and add substantial long term value to your business.  With this in mind, there are a number of factors worth considering during the selection process that will help assess the relative strength of candidate trademarks.

Key Considerations

In general, you should choose a trademark that:

(i) is sufficiently different to existing trademarks (registered or unregistered) to ensure there is no likelihood of confusion in the market place; and

(ii) is distinctive when applied to your product (as opposed to descriptive of the goods and services you intend to provide under the trade mark).

Trade marks that meet the above general factors are easier to register and protect from unauthorised use by others when compared to more descriptive, weaker trademarks.  For these reasons, in the longer term, they tend to be more valuable trademarks.

(i) Conflicts with existing trademarks

There is no way of being 100% certain that your trademark doesn’t conflict with an existing trade mark, but you can lower the risk by conducting desktop research to ascertain if anyone else is using the same or a similar trademark in relation to a business or product that is the same or similar to yours.  This desktop research should extend to the publicly available trade mark databases in the countries that represent your key markets.  The official trade mark offices of most countries have publicly available databases that can be searched online.  One useful database that covers Australia, New Zealand, USA, Canada and Europe and several other important markets is administered by WIPO and can be accessed  http://www.wipo.int/branddb/en/.

O’Sullivans also offers a free preliminary exact trademark search of the official Australian trademark database (and a number of overseas trademark databases) for our clients. These searches are not determinative of the registrability of your trademark, but can identify blocking trademarks that impact your branding strategy.  If you would like a free search conducted please complete the Preliminary Exact Trademark Search Request form available via our website www.osullivans.com.au.

There are also a range of paid searches that can be conducted if you wish to further investigate the registrability of your proposed trade mark.  These vary in cost from as little as $250 up to $2000-$3000 for full clearance searches.

Assuming that it is important to your business, you may also wish to determine the availability of a domain name corresponding to (or including) your potential trademark. Domain name searches can be carried out at a variety of sites readily available on-line.

(ii) Distinctiveness

In terms of distinctiveness, trademarks can be categorised from strongest to weakest as set out below.

1. Newly coined or “invented” trademarks (STRONG)

The strongest type of trademark is an invented word that has no meaning other than as a trademark. GOOGLE, FACEBOOK, PEPSI and SAMSUNG are well-known examples.  While invented word marks may be more difficult for a consumer to remember at first, in the longer term the success of the product or service results in a very strong, positive and unique association between the mark and the associated product, service, or business.  For these reasons, newly coined or invented trademarks generally are afforded the broadest scope of protection against third-party use. 

2. Arbitrary trademarks (STRONG/MEDIUM)

Arbitrary trademarks have a common meaning but are used to distinguish a product or service that is unrelated to that meaning. Well-known examples of arbitrary marks are APPLE (for computers/software), ORACLE for software, and VISA for credit cards.

3. Suggestive Marks (MEDIUM)

Suggestive marks indirectly indicate or suggest a quality or characteristic of the products or services upon which they are used.  However, they are not words that would ordinarily be used by traders to describe their similar product or service.  Examples of suggestive marks are PAMPERS for nappies, MASTERCARD for credit cards.  The more a suggestive trademark indicates a character or qualify of the product or service upon which it is used the more difficult it will be to register and enforce.

4. Descriptive Marks (WEAK)

Descriptive marks convey information regarding a quality or characteristic of the product or service upon which they are used.  These types of trade marks are often the first put forward as candidates because they make it easier to identify what a product or service is.  However, it is not the role of a trade mark to identify or otherwise describe the nature or characteristic of a product or service and it is very difficult to register and to prevent others from using directly descriptive trademarks because of the need (without improper motive) for other traders in the relevant goods or services to accurately describe them.  Examples include AUSTRALIAN AIRLINES for airlines, HOT & SPICY for take-away chicken, or merely laudatory terms such as “top”, “best” or “quality,” that merely describe attributes of the product.  

Whilst it may be possible to register a descriptive trademark that has been in use for many years, to the extent that consumers associate it with a single source or origin for that product or service, the costs for securing registration of descriptive marks is substantially increased and the scope of protection afforded to them is often narrow or otherwise compromised.

5. Surnames/Geographic Locations (WEAK)

It is common for trademark laws to prohibit, in the absence of long term use that demonstrates acquired distinctiveness, the registration of marks that are merely a common surname or the location/place where the products are made or from which the services emanate.  For example, SMITH is unlikely to be registrable, as it is primarily merely a common surname which may be shared by a number of people who may have interest in using it in association with a product or service.  Similarly, an application to register MARGARET RIVER or HUNTER VALLEY as a trade mark for wine would likely be unsuccessful (particularly in Australia but also in many other countries), as they are well-known wine regions and other wine producers in those regions have a need to use the location names to identify the origin of their products.

6. Generic Terms (WEAK)

A generic term is a word or phrase that is the common term associated with a particular category of products or services, and thus cannot function as an indicator of origin.  ASPIRIN and LAUNDROMAT are examples of terms that once functioned as trademarks but are now used in many countries as the common names for the products, regardless of their source.  Generic terms are not registrable or protectable.

Disclaimer

The information herein is introductory and general in nature and should not be taken as business or legal advice. For further information, refer to our disclaimer and privacy statement provided on our website www.osullivans.com.au.