Naming your business or products can be a tricky and time consuming process. You want a name that represents who you are, and what you do but is also catchy and unique. Importantly, that name should also be one which can be protected by registering a trade mark. You can read why trade mark registration is so important here.

Not all names can be registered as trade marks. The Trade Marks Office will not allow registration of trade marks which lack distinctiveness, or which are too close to existing trade marks. Clients often present us with finalised names, logos and even media launch plans before thinking about whether the name can be registered.

We don’t like telling our clients that the name they have agonised over and become attached to is already taken or not capable of registration. We know that name selection can take a lot of time, effort and emotional investment. We would rather see clients spend their time generating income for their business rather than going through multiple and lengthy name selection processes because each name they select is unavailable.

Here are some tips on how you can choose a great name which will give you maximum protection, now and in the future.

Choose:

Made up words

The strongest trade marks are invented words which have no meaning other than as your trade mark. These generally afford the broadest scope of protection against third party use of the mark. Some well known examples include IKEA, KODAK, GOOGLE and TIM TAM.

Arbitrary words

An arbitrary word is a real word which is unrelated to your goods or services. Many of the world’s strongest and most valuable brands fall into this category, such as APPLE (computers), NIKE (sports apparel) and ORACLE (software and technology).

Combinations

If you are committed to using descriptive or common words as part of your trade mark, you can increase the chances of securing registration by combining those words with arbitrary or made up words, using an unusual combination of common words or with some graphic elements. It’s helpful to make the first word in the combination as distinctive as possible as that is where the Trade Marks Office places its emphasis. For example, FACEBOOK, STARBUCKS and SHELL PETROLEUM.

Avoid:

Descriptive words

A trade mark will be rejected by the Trade Marks Office if it describes your goods or services, or an ingredient, quality, feature, function or purpose of the goods or services. The rationale behind this is that all traders in the same industry should be allowed to use these words to describe their goods or services. For example, all florists should be able to use names like BEST FLOWERS or FLOWERS FOR YOU. These are common phrases that are likely to be needed by other florists.

Other examples of using words that describe the goods or services to be protected are:

HUB for arranging exhibitions and consultancy services;
ICY for non-alcoholic beverages; and
CHARTERED SURVEYOR for real estate services.

Surnames

It can be tempting to use your own name as part of the business. If you are lucky enough to have a name that is fairly unique – go for it. However, if your surname is common you may be out of luck. The Trade Marks Office has its own surname register which indicates how common a surname is. The surname SMITH has a value of 114,997 and an application to register SMITH on its own is likely to receive an objection in relation to most goods and services. Whereas, a surname such as KARDASHIAN has a value of 3 so an objection based on using a common surname would not be raised, though using the surname of a well know person, if it is not your own, could raise other potential objections.

Place Names

The Trade Marks Office will generally object to trade marks which include the name of a place or region where there is a connection to the type of goods or services covered in the application in that place or region. The reasoning is that one person should not have the exclusive use of the geographical name so as to prevent other people in that place or region from using the geographical reference. This may include the name of streets, roads, districts and suburbs and even foreign towns, localities and other geographical references.

But I really like that name…

In our practice, we are finding that often clients are choosing or being recommended by their consultants to choose names from the above ‘avoid’ categories. We understand why this happens. Using a name that directly refers to the product or services, like ‘Cranberry Classic’ for drinks communicates clearly to consumers what the product is and the quality to expect. The understanding is immediate which makes things easier from a marketing perspective.

Unfortunately, the names under the ‘avoid’ categories are difficult to register as trade marks. But if you have a name that may fall under the ‘avoid’ category, there may be ways to overcome the objections raised by the Trade Marks Office. This always involves additional time and resources. It is much more cost effective for businesses to select names that will clear examination by the Trade Marks Office rather than overcome objections raised.

We know sometimes emotional attachment plays a large part in name selection and Sladen Legal is here to help navigate applications through the Trade Marks Office. We routinely work with marketing and design teams in the brand selection process to offer advice on names that may clear Trade Marks Office examination to ensure clients do not invest in a name that is not protectable. And if a business is committed to a name which is harder to register, we will develop a branding strategy to get trade mark protection for the business.

Regardless of which category of trade mark you choose, it must be unique. A trade mark search will determine whether any earlier filed trade marks are too close to your chosen name. We will examine how searching can assist the name selection process in our next instalment of this Trade Mark Series entitled ‘Is my trade mark available to use?’

Contact Michelle Dowdle, Head of Intellectual Property at Sladen Legal, @SladenIP.

Michelle Dowdle
Special Counsel
Sladen Legal
T +61 3 9611 0114| M +61 408 674 256
Level 5, 707 Collins Street, Melbourne, 3008, Victoria, Australia
E: mdowdle@sladen.com.au