MichaelBuck IP

A Patent & Trade Mark Attorney Firm

Choosing a Distinctive Trade Mark

By Michael Buck

The name that you choose for your business, or for specific goods or services that you provide in trade, is extremely important because it is the "handle" that your customers, and even more importantly your potential customers, will use to talk about you and your products, search for you and ask for you, rather than your competitors.

In each step along the way between a prospective customer deciding to seek out your goods and services and actually making contact with you, it's very important that the likelihood for confusion arising is reduced.

The types of confusion that I'm talking about are illustrated by the following scenarios:

  • A client recommends you to a friend who is a potential customer. The friend mishears your business name and confuses it with the name of one of your competitors.
  • A prospective client drives by your premises and sees your signage but can't take in your business name in the time that is available.
  • A client suggests to an acquaintance that they get in touch with you to engage your services. The acquaintance is interested but when the time comes to telephone you he can't remember your trading name.
  • Your name is so similar to the generic name for the products that you provide that when a person looks for you in a search engine or telephone directory, they can't work out which entry is actually for your business.
  • The name that you've chosen is the name of a business that's already been in existence for several years. When your clients refer you to their friends and acquaintances, they mistakenly contact the longer existing company.

In each of the above scenarios the likelihood of a prospective client making contact with your business, so that you are able to make a business transaction with them, e.g. a sale, is reduced because of a problem communicating your trading name to your prospective clients.

Furthermore, it's not just that you will miss out on the initial transaction. Obviously, you will also miss out on any repeat business that might have come your way from the prospective new customer. What's more, you will also miss out on any business that the prospective new client might have referred to you. So, there's an overall cumulative negative effect caused by the confusion that arises in each of the scenarios I've described above.

What is a Trade Mark?

The key principle to overcoming the confusion that occurs in each of the scenarios I've described above is to pick a trade mark which is distinctive, or as it's sometimes called "capable of distinguishing" you in the market place from your competitors.

This key principle is spelt out in the the Australian Trade Marks Act 1995, which defines the meaning of "Trade Mark" as follows: " A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person."

That's right! It's often overlooked but a trade mark is a sign that customers and potential customers use to find your business and/or your products, rather than those of your competitors. Above all else, it's not a description of your products. It's not a sign for finding the type of products that you sell no matter which business provides them in the course of trade.

Can you imagine if street signs had place descriptors on them instead of distinctive place names? Imagine if street signs had messages on them like "Lots of houses, a service station and a bus stop", or "A park, a shopping centre and a fire station" rather than "Baty Street" or "Riverina Place". It would be impossible to tell your friends where you live or how to get there.

Yet, many business people misunderstand the function of a trade mark and choose a word or phrase that is generically descriptive of the goods or services that they trade in, rather than a distinctive name that is memorable, readily communicated and which can be wholly associated with their business or their product offering.

To arrive at a trade mark that is adapted to distinguish your goods and services from your competitors the following factors should be taken into account:

Principle No. 1 - Building a strong brand with a descriptive trade mark is an uphill battle

I've already discussed this factor above but because it's such an important point we'll expand on it here. First of all, do you know what each of the following trade marks is used to sell?

Evinrude®

Nike®

iPod®
Mercedes-Benz®

Rolex®

Whirlpool®

Dominos®

Starbucks®

As you probably recognized, each of the above trade marks is very well known. They are respectively used to sell outboard motors, sportswear, MP3 players, luxury cars, luxury watches, washing machines, pizzas and coffee.

What do you notice about each of them? Well, none of them describe what they sell.

As I mentioned before, the golden rule for brand selection, which is reflected in the above list is that strong trade marks aren't descriptors of the products that they are used to sell. I'll go over that again because it's incredibly important.

If you're in the process of selecting a trade mark, steer clear of words, phrases or logos that clearly describe the product which it will be used to sell. I know that many of you will be saying to yourself "that doesn't make sense". "Surely", you may be thinking, "if the trade mark describes the product then that will help to make sales".

However, as we previously discussed, you must remember that the function of a trade mark isn't to describe your product to potential customers. Your brochures, website and salespeople will explain the features and advantages of your product much better than a single word or short phrase in the trade mark could. The function of the trade mark is to stand out, catch the user's attention, persist in their memory and be easy for them to say when they want to ask for your product. More concisely, the function of a trade mark is for your business to own a little piece of real estate in your customers' heads so that when they think of your product your trade mark will come to mind.

The simple fact is that a word or phrase which clearly describes the features of your product will be used by your potential customers in relation to your competitors' competing products as well. It won't be a trade mark that consumers associate with your product and your business alone. Consequently, and somewhat paradoxically, it is easier to build brand recognition for a trade mark that is not directly descriptive of the products that it is used to sell.

Here are a few more examples:

Budget ® is a much better trade mark than Cut Price Cars

Lexus ® is a much better trade mark than Luxury Motors

Intel ® is a much better trade mark than Intelligent Chips

Blockbuster ® is a much better trade mark than The Video Place

Get the idea?

Principle No. 2 - Optimise your trade mark for legibility, colour and shape.

Your trade mark is the "handle" by which customers request your goods and services. If it is difficult for customers to say your trade mark, recognize your trade mark or remember your trade mark then your business will be at a disadvantage.

Two factors that make a trade mark easy for a potential customer to use are:

o the sound of the trade mark.

o the visual appearance of the trade mark

The sound of the mark.

Don't choose a tongue twister for your trade mark. For example, think of Rolex®, Nike® and iPod®. Each of them is relatively short and extremely easy to say. It's hard to say any of them unclearly because they all include contrasting vowel and consonant sounds close together.

If you are thinking of exporting your brand overseas then make sure it doesn't have any negative connotations in the foreign countries you're interested in. For example, the trade mark SQUIRREL has positive connotations in Australia however in North America squirrels are often thought of as a nuisance and so the trade mark might not be suitable in that market. These sort of issues need to be considered right at the beginning of the trade mark selection process.

The look of the mark

First of all, choose an easy to read font. Some fonts are supposedly more masculine or feminine than others and some fonts are more old fashioned or modern than others. The type of font you choose should appeal to your prospective consumer demographic but not at the cost of legibility.

The aspect ratio of your trade mark (width : height) should preferably be about 5:4 so that a viewer can read it very quickly in one take without having to move their eyes. Trade marks that are very wide and narrow or tall and thin are difficult to read.

Trade marks are often accompanied by a logo, for example until about a decade ago a particular brand of service station always included an image of the flying red horse Pegasus on all its signage. Can you remember which brand of service station, e.g. was it Caltex® or Ampol® or Mobil® ?

It was Mobil®. Mobil® petrol stations used to have an image of Pegasus above the word MOBIL. Would you say to someone in search of a petrol station "go to the flying red horse petrol station" or "go to a Pegasus petrol station", or "go to the Mobil petrol station"? Probably only the last phrase would be used. As you can see, the logo is usually not nearly as important as the wording of the trade mark and in fact using a logo can sometimes reduce the impact, and hence the memory recall, of the wording.

Mobil dropped the flying horse and now simply use the trade mark Mobil® in blue letters with a red "o". The change has increased the visibility of their signage and decreased confusion over exactly what the meaning of the flying horse was. By focusing on the wording they've strengthened their trade mark.

There are only a very few simple symbols that make effective trade marks. For example, the double R for Rolls Royce® and the three pointed star in a ring for Mercedes-Benz® have both become powerful graphic trade marks. However, it has taken decades to build up the power of those symbols.

If you're launching a new trade mark then a distinctive word mark will usually be a much better option than a graphic.

Principle No. 3 - Use colors to distance your Brand away from your major competitors.

Designers and marketers commonly choose a brand's color scheme so that it is either in harmony with the products that they are selling or selected to evoke a particular mood in the prospective customer. While it makes sense to take these factors into consideration it is equally if not more important to take your competitors' color schemes into account when deciding on colors for your own brand.

For example, Coca-Cola®, the founders of the cola drink category, have a color scheme that is primarily red. For many years Pepsi® had a color scheme that was equally red and blue. However, incorporating a color synonymous with their main competitor into their branding did not help to distinguish them from Coca-Cola®. Consequently, over the last decade you will notice that Pepsi's branding colors have become more blue and far less red.

Summing Up

Trade marks are critically important business assets. Careful selection and development of a trade mark can help your business secure a brand that connects with potential customers to the extent that it "pre-sells" your products. Effectively, they buy the brand, not just the product. On the other hand, selecting the wrong trade mark can put you on the back foot right from the start.