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Original post : Mar 5, 2013

Ten tips for selecting a Trademark

Patricia BarclayGuest blog this week by Patricia Barclay of Bonaccord Ecosse Limited, a law firm offering general corporate and commercial support to businesses of all sizes from sole traders to multinationals.

Patricia regularly gives talks on marketing related issues including intellectual property and trademarks and is happy to take your enquiries if you're interested in finding out more about protecting your business.

Choosing a trademark for your product or service is an exciting time – rather like naming your baby so you want to get it right as the name will be an important part of defining the way that product or service is seen in the years to come. Here then are some tips to get you started.

  1. Think of your ideal customer – the mark you choose must appeal to your customer base as it is their attention and loyalty you are looking to attract.
  2. What does the mark say about you? – It should be something that reflects the image you are trying to promote and must be credible and constant in relation to that image.
  3. Sustainability – how long do you envisage the product or service being used? If it is something that will satisfy a passing fad this may not be important but if this is something that is intended to remain in use over many years or form the basis for follow on goods and services it must be something that will not quickly appear dated.
  4. Distinctive – it is a legal requirement that a mark be distinctive in order to be protected as a trademark but it is also good business sense as you do not want a potential customer to mistakenly go to a competitor because they got the names muddled. You can check whether similar marks have been registered by consulting the UK trademark register at http://www.ipo.gov.uk/tmtext or for Community trademarks at http://oami.europa.eu/ows/rw/pages/QPLUS/databases/searchCTM.eu.do but it is also sensible to check the name you are thinking about on various search engines to see if there are unregistered marks or other unexpected uses of the preferred name already out there. A quick way of checking availability is to check on the availability of domain names and then see if any of those that are already in use are for similar businesses. None of these checks is foolproof but together should give you some confidence
  5. If you are planning to sell internationally do check whether your preferred name has an unfortunate meaning in the language of any of your key markets. “NOVA” sounded a fun name in Northern Europe with a suggestion of being new but in Spain a car called “no va” – “no go” was unlikely to prove a winner.
  6. Make it easy – choose a mark that is short and simple to say and spell so that it can easily be found and recommended. Don’t make your domain name a typing test.
  7. Use open vowels – words with open vowels such as AVIVA and ASTRA tend to feel positive in English and are unlikely to be misheard.
  8. Take care with logos – if you are using a logo check that it looks good whether it is reproduced on a giant poster or in miniature and can be photocopied in black and white without losing the clarity of the image.
  9. Words are better than images – if you have limited funds you should usually concentrate on registering word marks over images as a registration of a word gives you protection against any formatting or font of the word but an image is judged only for overall “look ” and likelihood of confusion.
  10. Build your brand – just giving something a name is only the start of the process to develop its maximum value so make sure you give the baby a good launch and continue to invest in nurturing it through the years in how you use the mark and develop the brand with a carefully structured long term marketing plan.

Then, having chosen your trademark (or name) then you might want to ensure other people can't use it too! Find out more about why registering your Intellectual Property might be important here.

Patricia Barclay of Bonaccord

Patricia Barclay studied law at Edinburgh and Oxford Universities. After a number of years with Pfizer in the UK and US she became General Counsel of Vernalis plc, a post that she subsequently held at the privately owned multi national Ferring Group and at Solvay Pharmaceuticals. As such, she has been involved in decision making at the highest level in very different organisations. Find out more here.

Comments

An open vowel is one that you have to open your mouth to say as in "Ah" or "Ow". There is no legal rule about this and going against this suggestion will not make your mark less registrable - it is just that it makes the word less likely to be misheard and marketing types who do lots of focus groups tell me that they find these sorts of marks especially the ones with lots of "a"s tend to be more popular. That said my own mark BONACCORD does not totally follow this idea but for other reasons works very well for me. If you are selling internationally we also tend to recommend avoiding letters like J, H, G and TH which may be pronounced differently in different languages or that some nationalities might find difficult to say - this all goes to weaken the brand appeal although of course there are always exceptions and GOOGLE have not done too badly!
Comment by Patricia Barclay - Mar 6, 2013 11:45
What is an "open vowel"? Do you have examples of marks which didn't work because they broke this rule?
Comment by Andrew Jones - Mar 6, 2013 10:09
Very good article and well timed! I'm just about to di this do its useful with things I didn't realise I should do. Thanks!
Comment by Cheryl Turtlemoon - Mar 6, 2013 07:17
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