Trademarks are essential to any business and are frequently ranked among a company’s greatest assets, helping consumers identify a trader’s products or a provider’s services in the marketplace, whilst conveying the business’ attributes and reputation.
When starting a new business, one of the most exciting moments is defining how your company, products or services are going to be referred to in the marketplace. However, all too many times this dazzling moment is quickly darkened in memory and redefined as a snafu, making what one may have considered to be a magnificent trademark no more than a flub.
Changing a trademark or “rebranding” because of a fairly preventable mistake is a time consuming, costly and stressful process. In order to avoid this, the following pointers may prove useful and help avoid some of the common pitfalls trademarks owners commonly stumble into.
FIRST AND FOREMOST, ONE SHOULD UNDERSTAND WHAT TRADEMARKS ARE REALLY FOR
Trademarks are not for business owners, trademarks are for the public. We as consumers, for the most part, do not have the interest or time to investigate the qualities of a specific product or service. Most people do not have a clue what is under the hood of their car, inside their computer or mixed into their tooth paste. I assume that if a car is Mercedes-Benz it is safe and luxurious, that the iMac I just bought is top-of-the-line and that the white paste I stick in my mouth three times a day, produced by Colgate, will keep my teeth healthy and white.
Take Apple and its bitten apple symbol. The trademark is no more than the silhouette of a half-eaten fruit, nevertheless, when seen imbedded on a product, it automatically provides consumers with a large amount of information regarding its technology, design, quality, usability and cost. People can pay over $650.00 for an iPhone 6 plus, even though smartphones with similar characteristics can be found for almost half that price. However, the fact that it is an Apple product is what allows users to feel confident of the product’s characteristics, therefore biting the bullet and paying the stipulated price.
Every trademark is, or will be upon first use, a symbol that quickly allows consumers to determine a product’s or a service’s characteristics in comparison with those of its competitors, allowing them to form the expectation of what they are purchasing without having to delve any further.
KNOW WHAT YOU WILL OFFER UNDER YOUR TRADEMARK
Trademarks in the vast majority of countries must be registered in one or more specific classes depending on the products and/or services that they will be used for. There are 45 classes in which a trademark can be registered. For further information regarding the trademark classification system visit iGERENT's section on frequently asked questions (FAQ). If you would like to know what class the goods or services you wish to register you trademark correspond to, try our trademark class search tool.
If you plan on expanding your business in the near future, you should consider what classes may eventually be of interest in order to discard trademarks that may already be registered or in use.
How can you know the future? Ok, Shakespeare may have had a point when he wrote we know what we are now, but not what we may become, however, one can have a general idea of the areas their business might eventually expand to. If you are going to register the name of your restaurant as a trademark (class 45), you should consider checking if the trademark is not already being used for catering services (class 43) and even consider checking that there are not any food delivery services with a similar name (class 39).
The best marks consist of either coined words (words that do not exist and have no meaning), or words that ordinarily would never be connected with the products or services the trademark will protect.
Marks that consist of coined or made-up words are referred to as Fanciful Trademarks. Examples of this category of trademarks are KODAK, GOOGLE and EXXON.
Marks that consist of dictionary words that would never be used to refer to or describe the trademark’s products or services are known as Arbitrary Trademarks. Examples of this category of trademarks are APPLE, for computers, STARBUCKS, for Coffee, and BANANA REPUBLIC for clothes.
TRADEMARKS SHOULD REFRAIN FROM INCLUDING:
GENERIC TERMS - These are words that would commonly be used in the marketplace in connection with the products or services for which the trademark is to be used (e.g. SCREENS for televisions or SMOOTH for skin care products).
DESCRIPTIVE TERMS - Trademarks should not describe the goods or services for which registration is sought (e.g QUICK AND FAST for computer processors or GREEN MARKET for the selling of vegetables).
When creating a trademark, it is very tempting to include in the name elements 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 by the local trademark office.
DO NOT USE WHAT YOU CANNOT PREVENT OTHERS FROM USING
The main benefit of a trademark is that only you as the owner can use it or expressly authorize others to use it in connection with what you are offering. However, if you include generic or commonly used words in a mark, in most countries some sort of disclaimer will have to be added. A disclaimer in these cases is a formal declaration made by the trademark owner in which he or she renounces all claim present or future to the exclusive right to use a determined word or element other than as included in the application.
In jurisdictions where formal disclaimers are not necessary or even admissible, if a trademark includes commonly used words, it may be impossible to enforce your rights if competitors use or apply for trademarks that include such elements.
For example: If you were to register Okumanti Culinary Express for educational services related to cooking, preventing others from including the elements Culinary and/or Express in future trademarks will be downright impossible. The proposed trademark’s unique differentiating element is “Okumanti”. Both “Culinary” and “Express” are dictionary words that would normally be used by other consumers or service providers for similar services; therefore, their exclusive use would not be granted to the owner of the registered trademark. Protection for this trademark would thus be granted exclusively for the trademark as a whole (combination of all three words) and in practice the holder would only be able to prevent others from using “Okumanti” in other trademarks for similar services.
DO NOT BE A COPYCAT OR A LEECH
“Trademark squatter” is used to refer to a person that registers, in bad faith, a trademark that is known and identified with a third party. However, most cases of trademark copycatting are done unintentionally. Before registering, or even using a trademark, it is highly recommended that you verify that the trademark you will invest your hard-earned money and scarce time in, is not already being used in connection with identical or similar goods or services.
In many countries checking whether or not the trademark is already registered is, for the most part, sufficient. These countries are referred to as first-to-file jurisdictions (e.g. China); trademark protection in these territories begins upon registration.
In other countries like the United States, actual use of a trademark is what grants the owner the rights to it. Therefore, merely checking if a trademark has been registered before the local trademark office does not ensure that a third party cannot eventually claim rights over a mark, if they have previously and effectively used it in the marketplace. These countries are referred to as first-to-use jurisdictions.
The search for conflicting trademarks must not be limited to trademarks that are identical but should include those that may be likely to produce confusion. Likelihood of confusion exists if there is a presumption that consumers may believe that trademarks of different owners are related, affiliated, connected, or that the goods or services offered under such trademarks originated from the same source, trader or provider.
Confusing similarity with another trademark can be in appearance, in sound or in meaning. What similarity should be considered as confusing will be determined by the consumer’s first impression and whether the two trademarks may be mistakenly connected or cause a similar overall commercial impression. It is enough if the subsequent (conflicting) mark captures the consumer’s initial attention and such confusion is only temporary. Even if the confusion would only be temporary and not influence the consumer’s decision to purchase, the similarity of the two marks should still be considered as confusing.
CONFUSING SIMILARITY IN APPEARANCE
Confusion in appearance is not limited to trademarks that are identical. If a subsequent trademark includes elements that are identifiable with the original mark, there might also be confusion in appearance. The average consumer will retain a general rather than a specific impression of the trademark, therefore, even if there is a change of color or positioning, or if elements are added, if consumers are likely to connect a trademark with that of another, the similarity of the two marks should still be considered as confusing.
CONFUSING SIMILARITY IN SOUND
Determining whether or not trademarks are conflictive in sound will be done through a phonetic equivalency test. This can be done by simply reading out loud the alphanumeric elements of the trademark.
CONFUSING SIMILARITY IN MEANING
Determining whether trademarks are conflictive in meaning should be done in a two-step process.
1. Determining if the main elements of both trademarks are identical or closely linked in meaning. This would be the case if words from different languages are used but both allude to the same concept, or if synonyms that in context point to a similar concept are included.
2. Determining if the consumers of the products or services may be confused. Interpreting who the average consumer will be varies between products or services. The consumer who buys parts and fitting for air and space vehicles is likely (let’s hope) to be more discriminating and source-conscious than when purchasing dairy products.
Well-known trademarks are those that are widely recognized by the public, not only locally or in a determined country or territory, but on a global or regional scale. Be wary of registering trademarks that are identical or similar to a “Well-Known” trademark, even in a completely different class or for unrelated products or services, as these may still receive objections or opposition. For further information regarding well-known trademarks visit iGERENT's section on frequently asked questions (FAQ).
ALWAYS CONSULT WITH A TRADEMARK ATTORNEY!
Trademarks are central to any business and can have a devastating impact if not handled correctly. A great deal of factors not even mentioned in this article should be considered before proceeding (geographical names, surnames, prohibited signs, geographical indications, etc.). Although there are broad stroke similarities in trademark laws and procedures in every country, local law and practice varies from jurisdiction to jurisdiction. Therefore, even if a trademark has been successfully registered in your country but you wish to internationalize it, a local expert’s help is always advisable.
iGERENT offers trademark services in 180+ countries, for further information visit igerent.com.
Author: Conrad Fahrenkrug Attorney-at-law @ iGERENT