How to Choose a Trademark?
What is in a name….? Shakespeare once said. Well in today’s age it could be a few millions or billions of dollars. So a question that often comes in the mind of a startup/entrepreneur generally is …. What kind of a brand name should I choose that helps me rake in millions of dollars? Well the answer is quite simple… you must adopt a brand name that is distinctive and has a strong recall value ….To help you answer that, we have listed below some points to ponder on when choosing a brand name….
1. The brand name should not describe the products/services being offered:
One of the biggest myths going around these days is that a good brand name is one that allows the consumers to identify the nature of the products or services being offered by a Company. Well what startups and new companies adopting descriptive brand names do not realize is that when they adopt brand names which consist of words commonly used in their business circle to describe the products or services they offer they are weakening their brand value. The primary function of a trademark is to help consumers distinguish the goods or services offered by one entity from those of other entities. If the brand name being adopted is a word commonly used by entities to describe the qualities, characteristics, nature of the products/services they offer then they will be unable to stop other entities from using the same word to describe their products/services for e.g. Choco Treat in respect of chocolates and chocolate based confectionery; American Airlines for airlines etc. Brand names which are descriptive of the nature or characteristics of the products/services they offer do not generally proceed to registration as no entity can claim exclusive rights over words which are commonly used by other traders in that business to describe the products or services they offer. Hence, descriptive brand names are the weakest brand names to have.
2. The brand name could be suggestive, arbitrary or coined:
While a Company or startup should not adopt brand names which are descriptive of their products or features they could adopt brand names which are suggestive e.g. MICROSOFT (suggestive of software for microcomputers), NETSCAPE (suggestive of software which allows traversing the "landscape" of the Internet). Suggestive trademarks do not directly describe the nature of the products and require some imagination, thought, or perception to reach a conclusion as to the nature of the goods.
The strongest trademarks are made of words which are arbitrary and coined. Arbitrary trademarks are those which are commonly used dictionary words but which have no co-relation with the goods or services being offered under the trademark e.g. Apple-Computers, Orange-Mobile, Mango-Clothes. Coined or Invented Trademarks are those marks which have no meaning e.g. Kodak-Camera, Exxon-oil and gas company. If we were to look at the Top 10 brand names as per Forbes…you will notice that they have an extremely high recall value and have no direct correlation or connection with the goods/services they offer e.g. Apple, Google, Microsoft, Facebook, Amazon, Disney and these are either suggestive, arbitrary or coined brands.
It is, therefore, advisable to adopt a brand name that is coined/invented for the simple reason that if any other entity adopts a brand name which is identical or deceptively similar to the invented/fanciful brand name even in respect of dissimilar goods or services they will could be liable for trademark infringement or passing off because they will have no reasons to justify adopting the brand name which has no meaning.
3. Conduct a pre-filing search:
Once an entity has shortlisted a brand name to be used in respect of the products or services they wish to offer the next important thing they must do is to conduct a pre-filing search. The importance of a pre-filing search is to ascertain the availability of the brand name as a trademark i.e. to identify if there is any other entity that has already adopted a trademark which may be identical or deceptively similar to the brand name that the entity wishes to adopt as its trademark. If upon conducting a search no identical or similar trademark is revealed then the entity can proceed with filing the trademark application to register the brand name and commence marketing or promoting the products/services under the brand name. It is advisable to conduct a pre-filing search to ensure that the entity does not spend substantial money in promoting the brand just to be sued by another entity that had adopted a similar brand name in respect of same goods earlier in time.
These are some preliminary points that entities must keep in mind while selecting their brand name.