Selecting a Brand / Trade Mark

Selecting a trade mark can be difficult especially if the sector you are operating in is a relatively crowded one or where the trade mark register is cluttered with numerous marks similar to those of interest to you.  However, there are some simple steps one can take when developing a list of potential marks as follows:

• Less descriptive marks are normally easier (and less costly) to register and enforce. The strongest marks are entirely fanciful or coined / made-up words which have no meaning other than as a trademark. Examples of these include e.g. KODAK, CISCO, KIT KAT.  Other strong marks are arbitrary marks which are based upon words or terms that have a common meaning but which are applied to a product or service that is entirely unrelated to that meaning. Well-known examples of arbitrary marks are UBER for taxi services, PUMA for shoes and APPLE for computers.

• It can be slightly more difficult (but not impossible) to enforce suggestive marks which indicate the quality or characteristic of the products or services on or in connection with which they are used, but which do not directly describe the product or service. Examples of suggestive marks are TIPP-EX for white out fluid, SELLOTAPE for sticking tape, and JET2 for airline services.

• The most difficult / impossible marks to register and enforce tend to be descriptive marks which directly describe the nature of the products or services.  An example would be DAIRY for milk products, or FAST SHOP ONLINE for an online retail service. If customers learn to identify the mark as being associated with a single source of origin for that product or service as a result of years of exclusive use, that mark may acquire a secondary meaning and it may be registered and protected.  This is why terms like BANK OF SCOTLAND and BRITISH TELECOM are registered and enforceable; however, it should be borne in mind that this is a relatively costly and complex route to follow which has far greater risk.

• It is also worth bearing in mind that generic terms which have become common terms associated with a particular category of products or services cannot function as an indicator of origin and hence are generally not registrable or enforceable.  HOOVER is a classic example of a term that once operated as a trademark but which, through lack of enforcement, has become generic and is now used as the common name for vacuum cleaners regardless of their source.

• Having followed the above guidance, you should then develop a “long-list” of potential marks and then conduct a quick search for any existing registrations for the same/similar mark in the same/similar classifications using the free to search online government search (https://www.ipo.gov.uk/pro-types/pro-tm/pro-t-os/pro-t-find/tmtext.htm).  If you see any conflicts you should remove that from your list in order to compile a “short-list” of potential marks ordered in preference for us to potentially conduct consecutive professional trade mark availability searches since the free to search government registers are not always reliable or complete.  Such professional searches would be conducted on a knock-out basis i.e. we would start at the first listed mark and stop searching when we have identified a mark which would appear to have a suitably low level of risk attached to it.