If you are building your business and want to create a recognisable brand, you will probably consider protecting your brand by registering a trademark. And, your trademark will be used to protect your brand. This is important because neither your registered business name nor your brand name give you trademark rights on their own.
A trademark is a word, phrase, symbol, design, or sound, that distinguishes your products or services from other products and services in the market. It identifies the source of the product or service in the market so that customers have confidence that they are patronizing products and services from the business that they intend to patronize.
Trademarks are acquired through registration with the trademark office in your jurisdiction (the geographic location of your business). In the US, you can register state trademarks if your business is local and you only need local protection, or federal trademarks if you want protection across the entire country.
Typically, an application for a trademark is reviewed to determine whether your proposed trademark is registrable and if the same or a confusingly similar trademark has been registered or is in the process of being registered.
If you’ve conducted thorough searches for similar trademarks on the internet, domain registers, business registers, and the trademark registry that covers the geographical area where you want to register your trademark, the next thing to do is to consider other factors such as the strength of your selected mark. When you are looking for similarities, you want to note similarities in the word itself, the sound of the words when they are spoken even where they may have different spellings, and the presentation of the words, symbols, design, etc., that represent the trademark.
There are many factors to consider before applying for a trademark. You want to choose a strong mark to increase the likelihood that your application for registration will sail through each step of the process and be accepted with no issues. The easiest marks to register are fanciful words or arbitrary words, suggestive words are the next best option, descriptive words have to acquire distinctiveness through usage over a period of time before they are accepted and put on the main/principal register of trademarks. Generic words, which are common, everyday names for goods and services are never registrable.
Fanciful words
These are the strongest types of marks for your brand. Fanciful words are made-up words that have no known meaning. Examples of fanciful word marks include Kodak, Exxon, and Pepsi. While fanciful marks are the most likely to be registered and the easiest to police for infringement, it can require a lot of resources to educate the market to associate the fanciful mark with your product or service.
Arbitrary words
Just like fanciful words, arbitrary words are more likely to be registered than descriptive marks. Unlike fanciful words, arbitrary words are existing words that are used for a product or service that has no association or relationship with the word. The example of this that easily comes to mind is Apple (the name of a well-known fruit is usually not associated with technology). Like fanciful words, arbitrary words require a substantial budget for marketing to create an association between the name and the product or service in the market.
Suggestive words
Suggestive words are the next best option after fanciful and arbitrary words. Suggestive words suggest without describing the qualities of the products or services. They require a little imagination but once you make the connection between the name and the product or service, it makes sense. For example, Greyhound bus company. The greyhound is known as a fast dog breed, so the Greyhound mark suggests the speed of the bus service.
Descriptive words
Descriptive words describe the qualities of the products or services they represent. However, descriptive marks, as mentioned earlier, have to acquire distinctiveness after a period of use in the market such that consumers begin to associate the product to a specific source even with its generic name. The Holiday Inn hotel brand is an example of a generic mark that has acquired distinctiveness from use in the market. Descriptive marks are considered the weakest option and require vigilance because they are more difficult to police than fanciful or arbitrary marks.
Generic words
Generic words are everyday words used to identify different products and services. They are not registrable. Protected marks can lose protection through a process called genericide. This is when a trademark loses its specificity to its source and is used to refer to all products and services performing the same function. Genericide can take place when a trademark owner fails to adequately police the use or mis-use of its mark. Examples of words that were once protected trademarks are Escalator and Aspirin. Recently, trademark and brand specialists have raised concerns about the Zoom trademark, as the word Zoom is frequently used to refer generally to video conferencing services.
These are just some of the factors to consider before applying for a trademark. There are other reasons why your chosen word may not be accepted for registration so it is important to find out from the trademark office in your jurisdiction or a trademark specialist the factors considered for registration of a mark.
You should also talk to a brand specialist before you apply for a trademark, to consider how the mark you have chosen will be received by consumers in the market.
