When choosing a trademark keep in mind that the purpose of a trademark is to allow traders to differentiate themselves from other traders that sell or offer similar goods or services in the marketplace.
Common mistakes when choosing a trademark are:
1. Choosing a trademark that consists of generic terms or elements in regards to the goods or services for which it seeks registration. (e.g. SCREENS for televisions or SMOOTH for skin care products).
A trademark will give its owner the exclusive right to use the words or elements of the trademark in relation to the products or services in the jurisdiction in which it has registered. Therefore, if a trademark consists of elements that are commonly used for such products or services, a trader should not be granted the exclusive right to use it. Although trademarks that consist of generic elements may be registered in determined situations, preventing other traders from using such elements often proves difficult due to the weakness of the mark.
2. Choosing a trademark that is descriptive of the goods or services for which it seeks registration (e.g QUICK AND FAST for computer processors or GREEN MARKET for the selling of vegetables)
When creating a trademark is it very tempting to include elements in the name that may indicate the quality, characteristic, function or purpose of the products or services. A trademark that includes such elements may be refused for registration.
3. Choosing a trademark that includes known geographical names is also a common mistake. The inclusion of these elements may give rise to objections or office actions from the trademark office.
Depending on the actual geographical name, the trademark may be refused due to the qualities or characteristics that consumers may associate with the product due to the geographical name included in the trademark.
For example: FRENCH PURITY for perfumes. Consumers may be led to believe that such perfume is fabricated in France, and being that this is a country known, among other things, for perfumes, the trademark refers to the quality of the products.
4. Choosing a trademark that is identical or confusingly similar to another trademark for similar goods or services. In these cases, as expressed before, being that a trademark’s main goal is to allow consumers in the marketplace to clearly differentiate one from another, trademarks that are identical or confusingly similar to others will surely face objections or office actions from the registration office and may also face third party oppositions.