While a company’s success is anchored to the quality of its products and services, the success of a brand is inextricably tied to its identity. A brand is a name, an image, a set of identifying features that define the nature of a business and the kind of services it offers. It has to be distinct and easily identifiable.
The impetus to carve out a distinct identity is even greater on startups, who face an uphill battle at the outset. While most startups can settle on a brand name with minimal difficulty, others may accidentally select a brand name that is already in use and/or registered as a trade mark. When that happens, the legal consequences are often disastrous, especially if the startup in question has already built up a reputation and spent considerable funds building that reputation.
It is crucial for a startup to trademark its brand name, to protect its identity and avoid future infringement issues. The process can be very complicated and it is critical to get the details right at filing, so brand owners have to exercise caution. Here are some common trademark mistakes startups make:
Trademarking overly generic brand descriptors
A business needs to safeguard its most identifiable aspects. For example, ‘Lay’s ® Original Potato Chips’ has only trademarked the brand name ‘Lay’s’, and not the entire descriptor, as the phrase ‘original potato chips’ can apply to numerous other brands.
One mistake startups often make is trademarking overly generic brand descriptors. Many trademark experts agree that non-distinctive descriptors are weak and will not hold up in intellectual property court. Startups increase their chances of obtaining a trademark by registering a unique, original word/words and/or logo that communicate the brand identity immediately.
Additionally, brands that use geographic indicators in their product names, such as ‘Feta cheese’ or ‘Parma ham’, may face legal issues when trading with European Union nations, as the EU imposes strict regulations on such names. To be safe, analysts recommend dropping or minimising the use of geographic indicators.
Assuming that having the ™ symbol is sufficient to protect the brand name
The difference between the ™ and ® symbols is that the latter refers to a successfully registered trademark, while the former merely signals an owner’s intent to trademark a brand in the future. The ™ symbol is a means to claim ownership of a brand name, but it does not guarantee protection. The safest way is to register the trademark and obtain the right to use the ® symbol.
Failing to assign trademark ownership properly
It matters in whose name the trademark is registered. Is it in the business owner’s name, a company name or a trust? Straightening out trademark ownership from the beginning is crucial, as it will decide who receives payment should the trademark be sold in the future.
Assuming that the trademark protects all goods or services
While trademark registrations do protect a company’s products and/or services, they only hold force within a specific class of goods and/or services. A company trademarking its cleaning products’ name, for example, cannot block that the same name being registered by a mobile phone company.
It is important to strategically review the product lineup and register products or services early on, to avoid potential public confusion with similarly named brands. Remember, once an application is filed, the scope of the coverage of goods/services cannot be widened.
Pinnacle TMS is ready to help. Contact us today at +61 2 9520 4366 for a 10 minute complimentary consultation about trademarking your brand in Australia or overseas. You can also reach us at firstname.lastname@example.org for other enquiries.
Of course Suzanne’s Amazon #1 Best Selling Book ‘Trademarking Your Business’ answers 10 common trade mark questions. It is a short easy to read book and at $3.99 won’t break the budget!