Brand and trademark creation: More than a description

We have written before how marketing teams and legal advisers naturally differ in their approach to brand name and/or logo creation. The former often preferring names that their more risk-averse legal colleagues consider too ‘descriptive’ from a trademark perspective. Discover how to find the right balance in your approach to brand and trademark creation.

A trademark can be any word, sign, symbol or graphic that you apply to your company, goods or services to distinguish them from those of your competitors; for example, a brand, product or company name, or logo. The trademark serves as a badge of origin for your business and its brands and products, and can consist of words, logos, images, slogans, shapes and colours, or a combination of all of these.

However, not every word, sign, symbol or graphic is capable of being registered as a trademark. To be approved by the relevant trademark office, the proposed trademark must fulfil a number of conditions in order to be passed for registration, including that of ‘distinctiveness’. There are a number of elements that determine whether or not a trademark fulfils the distinctiveness requirement to become a registrable trademark. The central and most important factor is whether or not the chosen sign is descriptive of the goods and services for which it is being used.

Assessing distinctiveness in brand and trademark creation projects

Some key questions to ask when assessing your shortlist of brand names include:

• Is it a common term in your industry?
  It is possible for your brand to use a common term so long as you operate in a sector where that term is not commonly used. For example, Diesel functions as a brand and trademark in the clothing and fashion sector, but would not be accepted as a trademark for diesel, the fuel. The same applies to Apple for computers.
   
• Is the term generic?
  While many marketers admire the success of brands such as ‘google’ in becoming part of everyday language, trademark practitioners routinely caution brand and trademark owners against using brand names as nouns or verbs for risk that they might become generic terms. As a general rule, once a brand name becomes accepted as a common description of the type of goods or services to which the mark is applied, it will not be eligible for trademark registration. (Find out more: ‘Uggs and the battle against trademark genericism’.)
   
• Is it a neologism?
  You could opt to combine two words to form a brand name that is eligible for protection as a trademark. Creating a new word in this way can often deliver highly distinctive brand names. However, the fact that the resulting word can’t be found in a dictionary is no guarantee alone that it can be registered as a trademark (e.g. if it is clearly a combination of two descriptive terms). 
   
• Have you opted for an acronym?
  While brand names such as KFC or DHL are instantly recognisable because of their longevity in the market, such three-letter trademarks are generally quite difficult to remember and enforce against similar marks. (Find out more: ‘Trademark creation: a guide for marketers’).
   
• Does the name mean something in another language?
  Be careful here too that you don’t choose a word that has a negative meaning in a foreign language, as carmaker Ford famously found to its cost when launching the Ford Pinto in Brazil.
   
• Does the mark include a graphic element? 
  It is possible to satisfy the requirement for distinctiveness by adding a graphic element to a descriptive name; however, the addition must add something ‘extra’ to the mark. For example, a picture of a kiwi fruit added to the word ‘KIWI’ would not make the mark distinctive for fruit (as it simply makes it even more descriptive), but adding a non-related device, such as complex geometric shape, might. However, it is important to also note that the resulting trademark right will then only cover the trademark in totality, rather than the elements individually. It would never enable you to stop others selling kiwi fruit and calling them kiwi fruits. (Find out more: ‘Trademarks and distinctive character: Huawei application nipped in the bud’).
   
• Is the brand and trademark in extensive use?
  Finally, if it can be shown that the mark has become established in a market due to long-term and/or extensive use, you may be able to obtain trademark registration despite a lack of distinctiveness in your chosen brand name. To do this, you must prove that the sign has been used so extensively that your consumers perceive it as an indication of the origin of the goods and not as a description of the mark. While this is not easy to achieve, it can be done by demonstrating the market share of the brand, and the intensity, geographical spread and duration of the use of the mark. Audi obtained registration of the descriptive German phrase 'VORSPRUNG DURCH TECHNIK' (advancement through technology) on that basis.

The assessment of a mark’s distinctiveness can often be subjective. However, it is possible to assess the feasibility of registration for a chosen brand name by reviewing it for descriptive and distinctive elements. It is also important to check that the mark is available for use prior to any brand launch.

To find out more about brand and trademark creation best practices, download our white paper 'Mind the gap: How to integrate IP into brand development', speak to your Novagraaf attorney or contact us below.