If someone is using your trademark or a very similar one without your permission, you might be facing trademark infringement. Let me tell you how to spot trademark infringement and what you can do about it.
Trademark infringement is unauthorized use of a trademark that can cause confusion about the origin of products or services.
Trademark infringement is unauthorized use of a trademark that can cause confusion about the origin of products or services. In case of infringement, you can send a warning letter to the possible infringer and try to resolve the situation outside of court. If that doesn’t work, the trademark owner can sue the possible infringer and get monetary relief.
What is Trademark Infringement?
Trademark infringement, or trademark violation, means using a trademark without authorization from the trademark owner (or licensee) in a way that can cause confusion or deception about the origin of the product or service.
The purpose of a trademark is to avoid consumer confusion. There is a likelihood of confusion when the trademarks, as well as the goods and/or services for which they are used, are similar to a degree that consumers might think they come from the same source.
Actual consumer confusion is not essential, although it can be taken into account when measuring the likelihood of confusion.
Trademark owners (and sometimes licensees) can take legal action if somebody is infringing on their trademark and causing consumer confusion.
The scope of protection for well-known trademarks is broader, and the owner of a well-known trademark can sometimes stop others from using a similar trademark even if the products or services for which they are registered are different.
Trademark infringement examples
Let me show you some interesting examples of trademark infringement cases.
- 3M Co. sued a Chinese company that used the trademark 3N. Even though these trademarks are not identical and the products were not that similar, it was considered that trademark infringement had taken place, since 3M is a well-known brand and 3N had actually made a profit by using the trademark.
- Not only names and logos but even patterns and positions can be considered confusingly similar trademarks. Adidas sued the clothing retailer Forever 21 because the three-stripe design Forever 21 had made was similar to the iconic three stripes of Adidas.
- The World Wildlife Fund (WWF) sued the World Wrestling Federation (WWF), and made the World Wrestling Federation (WWF) change its name to World Wrestling Entertainment (WWE).
What to do when someone infringes your trademark?
If you own a trademark, you have exclusive rights. So if you think that someone has infringed your trademark, you can and should take action.
If you think that someone has infringed your trademark, you can and should take action.
You don‘t have to sue them right away. First, you can try to resolve the unpleasant situation outside of court and send a warning letter (also called a cease-and-desist letter). Inform the infringer of your rights as a trademark owner and warn them that their actions amount to trademark infringement, which must be ceased immediately. Inform them about the possible consequences if they fail to comply. In most cases, you might not need to take any further action.
Unfortunately, sometimes the only option left is to take the case to court and sue the possible infringer. In that case, you will have to prove that you own the trademark, that you were the first to use it, and that the other party’s trademark is likely to cause consumer confusion as to the origin of the product or service.
The courts may take other factors into account, such as:
- How distinctive the earlier trademark is;
- The level of similarity between the trademarks;
- The level of similarity between the products and services for which the trademarks are registered;
- The chance that the earlier trademark owner might eventually expand their business;
- Whether the earlier trademark was registered in bad faith;
- Actual consumer confusion;
- The degree of caution exercised by a typical consumer;
- The marketing channels;
- Defendant’s intent when choosing the trademark.
However, the most important ones are whether the goods and services are closely related and whether the trademarks are likely to be confused. This is assessed from the consumer’s point of view, and it’s not essential that actual consumer confusion has occurred.
If you are successful at proving trademark infringement, the court can prevent further unauthorized use, and you might get monetary relief.
If you’re in the US, file the lawsuit in federal court. Sometimes, depending on the circumstances, it is also possible to file the suit in state court.
How to make sure you can protect your brand?
Unless your brand is properly protected, you won’t be able to stop others from using it. The best way to protect your brand is to register a trademark because unregistered trademark protection is very limited.
First, assess which are the main countries where the brand name, logo or other important trademarks will need protection. The next step is to make a correct and accurate list of goods and services for which you want to protect trademarks. In the US, you will have to prove that you are actually using the trademark in relation to those products and services. I advise you to evaluate which are the most important trademarks and register these first.
If your trademark is not registered it can still be protected by state laws concerning unfair competition. However, I strongly suggest that you consider registering your trademark because you will only be able to stop others from using your unregistered trademark in the geographic areas where you operate. That might make it very difficult for you to expand your business.
What’s more, there is no presumption of validity and ownership when it comes to unregistered trademarks. You will also have a much harder time proving that you were the first to use the trademark in the area. The possible remedies, in this case, will be more limited and you won’t be able to get monetary relief.
To avoid possible infringement, inform others about your rights using symbols 
and ®. Use for unregistered trademarks and ® for registered trademarks.
To actually find out that somebody is using a trademark confusingly similar to yours, I advise you to regularly monitor your trademark. You might want to consider using a trademark watch service that monitors newly filed trademark applications for trademarks that are similar to yours and are applied for similar goods and services as yours. That way you will notice when someone applies for registration of an identical or confusingly similar trademark so that you can take timely action – for example, send a warning letter or file an objection to the registration of a competitor’s trademark.
In the EU, you also have the opportunity to use the help of the customs in the protection of intellectual property rights by submitting an official request to the customs authorities to take action for the protection of intellectual property rights. Regulation of the European Parliament and the Council of June 12, 2013, no. 608/2013 on customs work in the implementation of intellectual property rights provides that customs have the right to suspend the release of goods suspected of infringing intellectual property rights.
This will allow you to detect the import of fake goods in time. There are no official fees for this service, but you will have to agree in advance to cover the costs incurred by the customs authorities in connection with the destruction of the goods in accordance with the established procedure.
The protection of your trademark is in your own hands. Therefore:
- Make sure it is properly registered in all the territories where you want to use it,
- Watch the trademark,
- Act if you see confusingly similar trademarks being used or applied for registration.
If you have created a new brand name or logo, don’t forget to check it! It is very important because it can affect the safety of your brand. I will tell you how and where you can do that.
Many entrepreneurs feel that the brand name or logo they have chosen is unique, and no one else could think of it. Unfortunately, most of the time, that is not the case. More than 40,000 new trademarks are registered worldwide EVERY DAY, while the number of letters remains the same.
So before you decide on a particular name or logo, it is essential to ensure that nobody else has already registered the same trademark (or a confusingly similar one). To avoid unnecessary risks and possible losses, I advise you to check your trademark’s availability before making any investments in the brand. If it turns out that the name is already taken, it might be best to choose a different trademark.
Trademarks must be checked in all the territories where you plan to use them. In the US, use TESS. In the EU, use TMView. In my opinion, the best tool to use globally is Global Brand Database.
Why do you need to check your trademark?
First, if you choose a brand name without knowing about an earlier trademark, you might not be able to register your brand name as a trademark. An existing confusingly similar trademark is one of the main reasons why your trademark application might get rejected.
In that case, preventing others from using your trademark will be difficult since unregistered trademark protection is very limited. Besides, a registered trademark is a valuable asset for your company, which you can commercialize.
On top of that, the owner of the earlier trademark can prohibit you from using your trademark or expanding your business and even seek damages for using their trademark. You might have to do a rebranding. Whatever the outcome of the dispute, it will be very time (and money) consuming. So it is essential to check trademark availability to avoid these risks.
How to check your trademark?
To check trademark availability, you must conduct a trademark search using trademark databases. Trademarks are territorial, so the search must be performed in all the territories where you plan to register your trademark. For example, a search in the European Union requires an examination of both EU trademarks and the national trademarks of each EU Member State, as well as trademarks registered under the international system that are attributed to the European Union or an EU Member State.
You have to enter the search term in the databases and, where possible, check the box that says “Fuzzy search”, which means that the program will also show similar trademarks. You should also check various similar variations of the search term yourself.
In some databases, you can also search for trademarks by image by uploading an image with the trademark. The program will compare it to the trademarks found in the database (eSearch plus, Global Brand Database, for some countries, also TMView).
Trademarks are registered for specific goods and services, so you must mark the relevant classes of goods and services according to the Nice Classification. You should also mark that the search shows the trademarks that are active – filed or registered.
The key is to look for trademarks that are:
- registered for the same or related goods and services as yours
- similar enough that there is a likelihood of confusion.
Trademarks can look similar, sound similar, and have a similar overall impression. For example, XCEED and X-SEED are spelled differently, but these trademarks have been found to be phonetically confusingly similar.
It should be noted that the similarity of the marks must be assessed from the consumer’s point of view – think about whether there is a possibility that the trademarks could be perceived as related by the consumer.
I also recommend that you check whether an identical trade mark is registered anywhere in the world because if it has become widely known, it will have a wider scope of protection.
Only filed or registered trademarks appear in the databases, so check whether there are no unregistered trademarks by searching online on search engines.
Tools for conducting a trademark search
Use national trademark databases to look for nationally registered trademarks. For US trademarks, use the USPTO’s Trademark Electronic Search System, or TESS. If you are checking a graphic trademark, like a logo, you first need to look up the design code in USPTO’s Design Search Code Manual.
Use Madrid Monitor to search for trademarks applied for and registered internationally under the Madrid Agreement or its Protocol.
TMView is a tool that can be used to search the International Register, the European Union Register, and the national registers of the Member States of the European Union and many other countries.
Global Brand Database can be used to search the International Register, the European Union Register, and the national registers of the Member States of the European Union and many other countries. You can also search by image.
eSearch plus can be used to search for EU trademarks, and it allows you to search by image.
If in doubt, consult a trademark attorney
While it’s somewhat easy to look for identical trademarks, the process of finding confusingly similar trademarks is not as straightforward. Additionally, correctly evaluating the risk takes a lot of knowledge and experience. It might not be clear how to interpret your search results.
If you are not sure, I suggest that you consult a trademark attorney to conduct the search for you to be certain that the trademark is free to use and register.
But, how long does a trademark registration last?
The duration of a trademark registration varies depending on the country’s laws where it was registered, but it’s typically ten years (exceptions are rare).
What does trademark renewal mean?
In the United States, the EU, China, Canada and most other countries, trademarks have to be renewed every ten years. This means that when the trademark expiry term approaches, you have to file a trademark renewal request and pay the fees.
In the US, if the mark is still being used between the 5th and the 6th year after it was registered, then approaching the deadline the registration can be renewed. To prove the use, owner must file the maintenance documents required by the United States Patent Trademark Office (USPTO) within the adequate time frames. The owner must also meet the legal requirements for the trademark to be renewed. (You will find more details below.)
To renew the trademark in the European Union, the owner must pay the renewal fee before the renewal deadline.
What happens when renewal documents are not filed of fees not paid?
If trademarks are not maintained or renewal fees are not paid, trademarks can be cancelled by the relevant Trademark registry institution. If the registration is cancelled, it cannot be reinstated, and you need to apply for registration again.
Most of the countries (including the US and the EU) offer a 6-month grace period to renew the registration, but petitioners need to pay an additional fee.
If your trademarks are cancelled or expire, they can still be protected under common law, in case you have continued and continue using them for the specified goods or services. Still, it is costly and bears risk to protect unregistered trademarks. Therefore you should follow your trademark maintenance requirements or hire an attorney to do this.
Registration and renewal of trademarks in the US
1. Trademark registration
If you are a resident of the US, you can file the trademark application by using the Trademark Electronic Application System (TEAS). If you are a foreigner (individual or business) you will need to hire a US trademark attorney (Persons Authorized to Practice Before USPTO in Trademark Matters) to represent you before the USPTO.
The following documents must be prepared with the application:
- A Statement of use and a list of previous examples of use
- A trademark image (graphical representation)
- A trademark specimen (a sample of your trademark as used in commerce)
2. Declaration of Use
This needs to be done between the 5th and 6th anniversary of the date of your initial trademark registration. Here you can find specific maintenance forms.
USPTO is not sending reminders when you need to file maintenance documents.
It is your responsibility to request your trademark renewal on time.
3. Application for Renewal
This needs to be done between the 9th and 10th anniversary of the date of your initial trademark registration, and every ten years for as long as you want the exact trademark to be in force.
Renewal forms can be located on the USPTO website, following this link.
The USPTO will not send you any reminders, and it is your responsibility to file the renewal and pay the fees before the deadline.
Registration and renewal of trademarks in the EU
1. Trademark registration
If you are a resident of the European Union, you can file the trademark application by using the EUIPO trademark registration online forms. If you are a foreigner (individual or business) you will need to hire an official representative, who has a right to represent foreigners before the EUIPO.
You can contact me, and I will help you with everything regarding the EU trademark matters. Here is my EUTM portfolio.
The following documents must be prepared with the application:
- A trademark image (graphical representation)
- A list of goods and services
2. Application for Renewal
This needs to be done between the 9th and 10th anniversary of the date of your initial trademark registration, and every ten years for as long as you want the exact trademark to be in force.
If you have filed your trademark application, you will receive the renewal reminder from the EUIPO. And if you have a representative, she shall remind you of renewal when the time comes.
Renewal of international registrations
Once your mark has been recorded in the International Register, the international registration is valid for ten years and can be renewed every ten years directly with WIPO (upon payment of the required renewal fees).
You may renew your international registration either before the 10-year term of protection expires or within the six-month grace period following its expiry. Note that you must pay a surcharge if you renew during the grace period.
You can request renewal by filing and submitting the form, but the easiest way is to do it online.
If you need any help to proceed with your trademark registration or renewal – contact a trademark attorney to advise you through the whole process or do it for you.
]]>Protecting your brand name and other essential visual elements is important if you want to avoid conflicts and misunderstandings. Properly protected intellectual property is more valuable, it can be sold, licensed, invested in the share capital, used as collateral to attract investment, etc.
Let me ask, do you know an entrepreneur who is risking the security of his brand? In my practice, we often help to resolve conflicts related to trademark rights. However, you should know that this is a time-consuming process that involves a great deal of risk and expense that could have been avoided by taking care of brand security in a timely manner.
Common conflicts and issues related to brand security
1. Company is already using a brand name and later finds out that the same (or a very similar) trademark has already been registered.
In such a situation, the question arises as to whether it is possible to agree with the proprietor of the earlier registered trademark on coexistence and the division of market areas (or territories). You can imagine that if the proprietor of prior trademark registration is operating in the same field, it is unlikely that he will be interested in coexistence. In the worst situation, the only option left for you will be “rebranding”.
Rebranding can be inconvenient and costly. Of course, it can also be a new beginning for building a better and stronger brand… If you want.
2. Company has chosen a brand name, but later discovers that the chosen trademark is inherently unregistrable.
If the trademark is inherently not registrable, it is not possible to obtain exclusive rights to the chosen designation. In other words, you will never be able to prevent others from using similar names or symbols. There is an extensive list of criteria that determine what can be registered as a trademark. The key is to choose a trademark that is not descriptive and does not contain prohibited symbols. If a trademark is not registrable, it cannot be commercialized and has virtually no value.
In some cases, unregisterable trademarks can become registerable after a certain time of using them in commerce, but this is another story.
3. Company did not register trademarks in a timely manner, and cooperation partners (or competitors) have applied for trademark registration first.
There are often situations where a company has not registered a trademark at all or has not registered it in a timely manner in all the countries in which it plans to market products or provide services. And then unfair partners or competitors file for the exact same brand name first…
Trademark registrations applied in bad faith are mainly aimed at blocking the market or blackmailing the enterprise. Unfortunately, such cases are very common in practice! If you ask – can such situations be successfully solved through courts? Yes, they can, only it can be a very expensive and time-consuming process.
The above examples are only a part of all potential problems that can happen when brand protection is disregarded. Trademark registration is a tool to increase the safety and value of your brand.
When trademark conflicts arise there are many strategies and tactics to find the best solution. You can rely on experienced professionals to help you find the most appropriate solution. Still, all this will be more expensive than a timely and correct trademark application.
What happens when a trademark conflict starts?
There are companies that can afford to sue for years for the right to register and use the intended trademarks. For example, the famous brand Tesla (Tesla inc.) has been litigating for decades with companies that have also registered or applied for the name Tesla both in similar and different areas of business. But… Firstly, not all companies can afford it financially. Secondly, not everyone wants to take risks without knowing whether they will be able to prove their right to the chosen name or designation. And thirdly, the business has to reckon with a long period of uncertainty as to whether and how much can be invested in the design and marketing of the chosen brand.
Therefore, many entrepreneurs are forced to rebrand. This can be not only financially but also a psychologically unpleasant moment. You can imagine – how an entrepreneur would feel seeing that the name, all brand identity elements (including packaging, social media names etc.) can no longer be used.
To protect yourself and your business from forced rebranding, trademarks must be adequately protected.
PerfectTrademark.info
Brand name and design ideas need to be checked first!
When you have chosen the brand name, it might feel fresh and unique. Many brand creators feel like they have chosen the name no one else could think of. It is possible, and when it happens it is a great success. However, it should be noted that more than 40,000 (!) new trademarks are registered in the world every day (!), and at the same time, the number of letters in alphabets remains the same.
Therefore, before making any investment in a brand (logo, website, designs, marketing), make sure that the name and logo are free to use. To have a long-lasting and stable brand your trademarks must be unique. You should pick something that is not confusingly similar to already registered trademarks or trademarks in use in all the countries where you plan to distribute, advertise, and sell your products.
Prior right search must be conducted in the relevant trademark registers, business registers, as well as on the Internet in general. Since trademark search and the interpretation of the results impact your brand future, I recommend entrusting the prior right search to a professional trademark attorney. This will give you comprehensive information about the situation in the market together with risk analysis and advice on how to proceed.
If the trademark is registrable and free to register and use, you can plan a protection strategy.
Trademark registration is not mandatory. Anyone may use the signs in the course of trade without registering them. However, when you are planning a long-term business and serious investments in marketing and products, the trademark registration will be the best investment in brand safety.
What is the difference between a registered and an unregistered trademark?
The legislation in many countries provides the protection of unregistered trademarks. To protect a trademark that is not registered, it must already be in use and have gained some recognition in relation to specific goods or services. Also, you can protect an unregistered trademark if you can prove a competitor’s bad faith. Protecting unregistered trademarks is a costly and complicated process with huge risks. Still – possible.
Important trademarks must be registered!
If you are planning an ambitious project, attracting significant investments, I recommend checking the trademark ideas and applying for registration timely – before the new brand name appears in public. Don’t talk about your genius ideas before you have protected them. All Big Brands apply for trademark registration before announcing the new products to the market.
Application for registration is a way to protect trademarks that are under development and not yet used.
The proprietor of a registered trademark may prohibit others:
- Use (printing, affixing) of identical or confusing similar marks on the goods or their packaging.
- Offering, placing on the market or storing goods with a view to placing them on the market in connection with such trademarks.
- Offering or providing services in connection with protected trademarks.
- Imports or exports of goods under such designations.
- Use of trademarks or their essential elements in a company name, trade name or other designation used to distinguish goods or services on the market.
- Use of trademarks or similar marks in the name of a domain if the website is used in connection with the distribution of identical or similar goods or services.
- Use of trademarks in business documents related to the distribution of goods or provision of services.
- Use of identical or confusingly similar terms in advertising.
When you do not need to register trademarks?
The answer is simple – do not apply for trademark registration if you have no reason to protect the name or it is impossible to protect it.
If you have a short term product or you do not mind someone else using identical or confusingly similar designations, or you believe that no one else would like to use this name you can disregard trademark registration.
Also, a trademark cannot be registered if it is descriptive. For example, chocolate produced in London can be called “London Chocolate”. But it will not be allowed to register this name alone as a trademark. London Chocolate should be free to use for everyone who produces (or sells) chocolate in London.
There can be cases where trademarks can be relatively secure even without registration. For example, when competitors are not interested in using a particular trademark. It can be in the case when a trademark is your name or website address. Note that domain names can be protected with trademark registration!
In the case of goods, when different distributors and agents are involved, trademark registration is a must-have.
Ieva Zvejsalniece
Service marks are copied less frequently. In the case of goods, when different distributors and agents are involved, trademark registration is a must-have. This is because the service provider will always be identifiable, but the goods reach the final consumer through a variety of channels. The origin of goods is firstly identified by the name, logo or packaging as a whole. To prevent competitors from copying your brand name or other important brand elements, trademarks must be registered.
The role and value of the brand
We are living in a time when brands are the most valuable business assets. The brand in itself includes the business name, logo, product names and designs, communication style, business values, reputation and overall image. Each brand is built on a trademark or even several. When building a brand (just like a house), the foundations must be appropriate, stable and secure.
If your business, service, or product is successful (or you expect it to be successful), you should pick a unique name, and secure it with trademark registrations.
What are the first steps to trademark registration?
- Assess and define in which countries (markets) you want to protect your brand, and what are the priorities.
- Evaluate which trademarks must be protected first.
- Create an appropriate and accurate list of goods and services. The list should include goods and services that the company currently offers, as well as those that it plans to introduce in the next five years. The list should be in accordance with the latest edition of the Nice classification.
- Determine who will be the owner (or owners) of the trademarks. This is an important decision that will affect future commercialization opportunities.
- If you are not a professional in the trademark strategy and protection field, find your trademark attorney. She will help you with the search, strategy, and filing of the applications, or will do this for you.
Main aspects of a perfect trademark
When we look around, we see examples of successful and not so successful brands. Of course, success doesn’t depend on your trademarks alone but having a perfect trademark helps to increase the security of the business and boost the confidence and value of the brand.
There are 3 main aspects I invite you to consider to increase the safety and value of the brand. Those are uniqueness, appropriateness, and protection of trademarks. Uniqueness is essential for the safety and value of the brand. Uniqueness will help you to differ from the competition by staying in the customer’s mind. Uniqueness will help you to protect your brand name and elements and in the case of conflicts to prove your prior rights.
What exactly is a trademark?
Trademarks are signs used in trade to identify products and services. Business name, product name, logo, slogan, package design and even sounds, motions, special shapes, and holograms can be used as trademarks. As long as this is something that helps customers to distinguish the goods or services of an enterprise from those of other enterprises.
Please, don’t confuse a business name with a trademark. These are not synonyms. Often business names match with trademark names, but it does not give the enterprise’s name a trademark status. To have a trademark status on a name you have to use it on the goods or in relation to services. In the U.S. and some other countries, there is a special status which is called an intent-to-use trademark. This means that, when publishing announcements about new products entering the market, you can use a sign after a product name, so the audience (and competitors) knows that you have an intention to trademark this name.
How and where to protect trademarks?
Although trademark registration is not mandatory, important trademarks should be registered to protect your brand. Trademarks are registered in special registers which are territorial.
There are state trademarks, federal trademarks, national trademarks, regional trademarks and international trademarks. Sounds complicated – but it is not when you know what you need. Here are a few examples of registration options:
- In the United States, it is possible to protect your trademark at the state or federal level. A state trademark is issued by a state office, whereas a federal trademark is issued by the United States Patent and Trademark Office (USPTO)
- In the European Union, it is possible to register an EU trademark or a national trademark. The EU trademark will be issued by the European Union Intellectual Property Office (EUIPO), and national trademarks are administered by the national IP offices of every country.
Should I register the brand name and other trademarks?
In many countries, even unregistered trademarks are protected by intellectual property rights. Still, the enforcement procedures are complicated, expensive, and often don’t bring “fair” results.
There are many cases where the owner of a prior unregistered trademark is not capable of proving his trademark rights and loses his mark to some business who has stolen the brand name or design, slightly modified (or sometimes not even that) and registered the trademark. Sometimes coinciding brand names are just unlucky coincidences… However, if a conflict arises, there will be only one winner.
Every entrepreneur can imagine how unpleasant the feeling would be when you are forbidden to use your own brand because a competitor stole your idea, or you just picked the wrong name, the name which is already taken.
- Are there more risks when picking trademark names?
- Yes, there are certain things that can not be registered and protected in general. To obtain a registration, the trademark should be distinctive, non-descriptive, and shouldn’t be rude or misleading.
Therefore, if you have serious business plans, before investing in branding and advertisements you should pick a strong brand name, check the availability, and register it. And now I will tell you how.
3 Universal principles of trademark rights
Before moving forward with creating safe trademarks, I would like you to understand and remember three main universal trademark principles:
- Trademarks are territorial. That means trademarks can be protected in those countries (or states) where the registration is in force.
- Precedence (Priority) principle – trademark rights are valid from a certain date. For a registered trademark, this is the date of the trademark application. If the trademark is not registered, it is the date from which it can be proved that the trademark has been used on the products. To say simply – if a conflict arises, the one who can prove earlier rights is the winner.
- Protection applies to specific goods or services. The list of goods and services in the trademark registration indicates the scope of rights. Only well-known and reputable trademarks are eligible for more extensive protection.
This is why it is important for a brand owner to plan in what territory the trademark should be protected, to create an appropriate and accurate list of goods and services, and to apply for the registration as soon as possible.
How to pick a brand name and other trademarks?
What trademark is the best for you?
There is a saying: “A good trademark is easy to remember, but a great trademark is hard to forget!”
Yes, but there are additional emotional and practical considerations, I invite you to think about.
Practical considerations are connected to using the name – both for the enterprise and the customers. So tell me if your brand name is:
- Is it easy to read and understand?
- Is it easy to say/spell?
- Is it easy to write?
- Is it easy to remember?
Emotionally the trademark should fit the character of the goods and services in the first place. Secondly, it should fit the target audience. Thirdly, it should fit the company’s character and culture. There are many strategies and techniques when it comes to picking brand names. When my clients ask, which trademark name is the best, I advise them to check the following:
- How does this name make one feel about the product?
- How your customers would feel when they tell their friends something like: “I just bought a YOURBRAND product X. I am so satisfied, you should get YOURBRAND X product too! ”
- How do you and your employees feel, when they say, for example: “Hi, I am Barbara from YOURBRAND!”
What makes the trademark registrable?
Not all the great and perfectly sounding products, business names or slogans can be protected as trademarks. To protect a trademark, which means to have the right to forbid others from using identical or similar designations in relation to identical and similar goods in the course of trade, the trademark should be unique, distinctive, and non-descriptive.
UNIQUE trademarks
Uniqueness serves the purpose of distinguishing the goods or services offered by your company from those offered by other companies.
Before confirming a brand name or any other trademark, you should do a proper trademark search, to confirm that other businesses do not use similar names or symbols.
Trademark searches should be conducted not only on internet search engines but most importantly – in official trademark registers in relation to all the territories where you plan to expand the business.
When conducting a trademark search, please consider the 3 trademark protection principles and look not only for identical but also similar names and symbols. In fact, trademark search is something I would advise you to hire a professional trademark attorney for. It is essential not only to obtain accurate and comprehensive results from databases but also to interpret them correctly. The most reliable interpretation can be made by an experienced trademark attorney.
Additionally, you can check the company registers, but remember that the company name is not the same as a trademark. Finding similar enterprise names to your trademark is just a seed for further research.
DISTINCTIVE trademarks
A distinctive trademark is a mark that contains enough information to help customers to distinguish a source of goods or service provider. For example, marks consisting of one or two letters, simple shapes and colours would not be considered inherently distinctive trademarks in the eyes of trademark examiners. Practice shows that a colour or a few letter combination can only obtain trademark protection after it has acquired distinctiveness in the eyes of the public. For example, the 3M company now owns a colour trademark – Canary Yellow colour with regards to self-stick notes.
NON-DESCRIPTIVE trademarks
Trademarks should not casually describe the goods or services with words that anyone would or could use to describe them. Namely, a trademark should not specify the quality, quantity, size, shape, purpose or kind of products.
For example, the brand name COLDBERRY would be considered as descriptive for products like ice cream or smoothies, but it would not be descriptive for marketing services or vacuum cleaners.
Often companies pick descriptive trademark names, and later, when they cannot obtain trademark protection, they decide to add additional distinctive elements. This is not the best strategy if you want a perfect trademark. Because, even though you get a registration certificate, the descriptive part alone will not have protection.
Another example: one cannot register the word mark “cool” with regards to jewellery and accessories, as the trademark would describe the quality of goods. But it is possible to draw each letter of the word “cool” with different colours and maybe give them an interesting shape, and thus it will be possible to get the trademark registration. But would the owner of this registration be able to forbid others to use the word “cool” with regard to jewellery and accessories? The answer is – NO! In case of trademark conflicts his rights will be limited to the exact expression of the graphical representation of the mark.
Therefore, for the safety and value of the brand, I advise you to pick distinctive trademark names, so you can register them and forbid others to use the same or identical names on similar products.
The following things cannot be registered as trademarks
MISLEADING designations
It is important that the consumer is not tricked into buying the goods or services with wrong expectations. For example, the name CALM DREAMS would not be a good one for coffee or any other products containing caffeine.
INAPPROPRIATE designations
Words and signs the meaning of which is disparaging against certain people or is contrary to public morality cannot be trademarked. Sometimes you can choose an inappropriate name by mistake, especially if it’s in another language. Even if you have created your trademark from randomly chosen letters with no apparent meaning, I recommend you to check this word in all languages of the countries your business could possibly reach.
Risky trademark choices
A trademark that is identical or similar to other trademarks in the same field
If your trademark is similar to an already registered trademark or even to another trademark in the application stage it is a risk that the owner of prior rights will ask you to cease and desist from using your trademark. There are many countries where even unregistered trademarks, which are in use, can be a basis for the opposition to your trademark registration and use. It is more difficult and expensive for proprietors of unregistered trademarks to prove their earlier rights, but this can be done if there is sufficient evidence of use.
Therefore, when picking a brand name, it is useful to check the availability properly, not only in official trademark databases but also in company registers, and domain name registrars.
A trademark that is identical or similar to a famous brand
Please don’t pick the name or logo that is identical or confusingly similar to a famous brand. Even if it operates in a different business field. If there is a chance that consumers could possibly confuse the trademarks or imagine any connection between them, it is a great risk you will lose your brand.
It’s important to bear in mind that in trademark arguments the possible confusion of trademarks is assessed from the consumer’s point of view.
Your best choice is to create something unique. Getting inspiration from competitors, when creating your business name or product package design, is a risky choice. The risk is that the prior right holder can sue you, and not only forbid you from using the trademark, but also request to cover unearned profits.
Finally – the 3 main steps to a perfect trademark:
- Pick the name that fits your product now and in the future and is distinctive and otherwise registrable.
- Check the name and symbol availability in official trademark databases, and on the Internet.
- Prepare an appropriate and correct list of goods and services, and apply for trademark registration.
If you require experienced assistance in any phase of the trademarking process, from strategy and registration to conflict solution – contact us.
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