How To Select A Strong Brand Name,
by Cathryn Warburton
Your brand name is the cornerstone of your business identity.
Iconic brand names such as Coca-Cola, Apple and Macdonald’s worth billions of dollars. This is the value of the actual brand names, not the businesses themselves.
For smaller businesses, your brand name can be pivotal. It might not ever become worth billions of dollars, but it is essential to your business.
- What is a “strong brand name”?
A marketing professional once told me that the more descriptive a brand name is the stronger it is. For example, the name “colourful kids clothing” tells you exactly what you are going to get, children’s clothing that is colourful.
When I talk about a “strong brand name” this is not what I am talking about at all. In fact, I am talking about virtually the opposite.
The less descriptive the name is of your business, the more distinctive it is. From a legal perspective, it is much easier to register a business name or brand name as a trade mark if it is not descriptive. The reasoning behind this is that others in your industry might need to use those descriptive words.
This is not to say that you should select a name that has no descriptive elements in it whatsoever. Something that hints at your goods or services is often acceptable for trade mark registration. If you already have a business name that is descriptive, you may be able to get it registered as a trade mark by adding a logo to the trade mark, but such protection would be weaker than if you are able to register the word on its own.
- Choose something distinctive
A distinctive brand name is generally one which others in your industry would not wish to use, other than in order to trade or for your reputation.
A good example of this is the “Apple” trademark for computers, phones and other electronic devices. No one else in the world hurtful to use the name of a fruit in respect of these types of goods until Apple Inc. did so. Anybody else now trying to call such goods Apple, will clearly be infringing.
On the other hand, if you are a business coach and you call yourself “excellent business coaching” your business name will be very difficult to protect by way of trade mark registration, because of the descriptive nature of this name. Also, it might not be very easy for your clients to remember.
Distinctive trade marks often have a mental image that people can associate with the brand name.
- Make sure it does not already belong to somebody else
Most business owners are aware that they should check the ASIC site to make sure that nobody else has a similar business name, and that they should have their trading name registered as a business name.
The ASIC lookup tool (http://abr.business.gov.au/) is the place to check whether someone has the name you want registered as a business name.
However, that is not the end of the story. If somebody else has the same or similar business or brand name registered as a trade mark your use of that name will amount to trademark infringement even if:
- you have that name registered as a business name,
- you use the name before the person registered the trademark.
I have lost count of how many clients have come to me either after they have received a cease and desist letter alleging that they are infringing somebody else’s trade mark, or wanting to secure trade mark protection only to find that one of the competitors has registered the name first.
One of my clients had some brochures printed with the trade mark “be the star that you are” printed on them. This slogan had come to her while she was working on her business, she had never heard it before and honestly believed that she was the originator of this beautiful slogan. Being an intellectually property savvy business owner, she asked me to register the slogan for her as a trade mark.
She was very shocked to discover that somebody already had that slogan registered as a trade mark. Her only option was to scrap those brochures and not use the slogan anymore. She also very kindly gave me permission to share her story with other small business owners to help you make sure that you do not fall into the same potential trap of believing you have rights to use a name when you may not.
- Preferably registered by you as a trade mark before you start trading
There are actually businesses out there (I like to call them “sharks”) that make a living from seeing which businesses have rising profiles, they then check to see if these businesses have their business name registered as a trade mark. If not, the sharks then register the business name as a trade mark and offer to sell it back to the business owner at an extortionate rate. This is not illegal, because trade marks are registered on a “first come, first served” basis generally.
If someone has got your business name registered as a trade mark, the only way to get it removed is through the courts, and legal costs are likely to be in the region of $100 000 for a contested case. The outcome of litigation is never guaranteed, and you might end up losing the name anyway.
- Use a trade mark lawyer or trade mark lawyer
When my son was 8 he used to cut his own hair and it took me years to convince him that just because he could, does not mean he should.
The same applies to trade marks. While you can register your own trade mark, this does not mean you should. Government fees of $330 apply per trade mark class (or category). Your goods or services might fall into more than one category. A specialist trade mark lawyer will be able to advise you on this.
Just this week, I had a client who wasted $3300 on government fees because:
- Her trade mark was so descriptive it was never going to get through to acceptance without a logo, and
- She selected 10 classes to protect her trade mark in when she only needed two ($660 vs the $3300 she actually paid in government fees), and
- The goods and services she claimed in those classes were inadequate anyway.
We could not rescue that trade mark application, but we were able to file a new application (with an appropriate logo), in just two classes, which cost her less than her initial self-filing attempt. With that she gets a guarantee of registration from us, plus she does not have to worry about getting the formalities right.
Another client of mine took advice from the government agency that processes trade marks and ended up with very narrow (almost useless) trade mark protection. When he wanted to complain I had to explain to him that government agencies do not give legal advice and cannot be held to account. If a trade mark lawyer had given him that advice he could have got them to file a new, broader application at no charge, because the narrow range of goods (limited in his case to “wooden toys”) did not give him effective protection (a competitor started using his trade mark on plastic toys).
Meet Cathryn Warburton – one of YMag’s Experts on our Advisory Board:
For a free check of the strength of your business or brand name, or a free trade mark quote, email Cathryn on email@example.com or you can a book a free 15 minute chat into her diary here https://calendly.com/cathryn-1/15minphone
Cathryn Warburton is an award-winning solicitor and patent attorney. She is The Legal Lioness with a passion for safeguarding her clients’ business and intellectual property interests. She is a partner at Acacia Law www.acacialaw.com
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