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Trademark registration: mistakes to avoid when creating a trademark

How to create a brand that has all the characteristics to be registered? Expert advice for Copywriters, Art Directors and Communication Agencies.

Those who deal with communication for a trade know well that a Brand is strong if its brand is clearly distinguished from that of its competitors and is legally protectable . The trademark of a company, product or service must be legally defensible against any disputes and the fundamental condition for being able to protect it is registration . For example, Social Factor is a registered trademark and was one of the first legal actions when it was founded, five years ago now.

However, to be registered a trademark must have some very specific characteristics , otherwise the competent office will reject it and the customer will have unnecessarily invested in creativity and advice.

How then to design a trademark that has all the requisites to be registered? What characteristics should it have and how to avoid offering its customers weak or even null brands, therefore not registrable or defensible?

We try to answer these questions by listing the most frequent mistakes in creating a brand and putting in place some useful tricks to study proposals in line with the requirements of the law. But first a brief overview of what are the reasons that should convince a company to register a trademark .

Trademark registration is not mandatory, but it is essential for a successful business

Those who turn to an agency or a freelance for the creation of a brand are not always aware of the importance of registration. The fact that this is not mandatory and the commonplace (wrong) that using a trademark for years means owning it (and therefore protected from legal disputes ), are two of the reasons that lead companies to avoid registration , until it is too long. late.

Usually it is decided to register the trademark when the business has already started and starts to be successful.

Only to discover that someone thought of protecting that name before us . Thus the chosen trademark, identical or similar to the one already registered by others, can no longer be used.

Worse, it can also happen that the person holding a registration certificate notices that someone is using a trademark similar or identical to his … and sends a warning through his lawyer to tell him not to use it anymore.

The consequences are all the more serious the more successful the Brand has been and can lead to the withdrawal of the goods from the market, to the payment of compensation and if the brand name corresponds to that of the company, even to the change of the company name . Not to mention the serious damage to image , the contracts to be canceled, the vague orders and the economic losses deriving from the (useless) investments made up to that moment to position the brand on the market!

An avoidable catastrophe upstream , when the brand is still under study and the customer has the time and resources to invest in a strong brand.

Therefore it is important that the agency or freelancers in charge study valid proposals both in terms of communication and compliance with the law , avoiding some typical errors .
Let’s see what they are.

First mistake: proposing a descriptive brand. Cannot be registered!

The most common mistake in trademark registration is proposing a naming and therefore a trademark that it describes . What does it mean? It means that, with respect to the product category in which the company operates, the name chosen coincides with what is represented or illustrates its intrinsic characteristics :

  • geographical origin (Italian, from Florence, from the USA …)
  • destination (for men, for sportsmen, as chefs …)
  • quantity (per kg, hectares, 1 liter …)
  • quality (sweet, fresh, yellow …)
  • species (hound dog, red radicchio, soft wheat …)

So, for example, a company that produces wristwatches for sportsmen will not be able to register the “Sport Watches” brand, because this naming not only coincides with the object produced, but also indicates its destination (for those who play sports). Or an Italian company that produces sweets will not be able to register the “Italian Sweetness” brand, because it describes both the product and its geographical origin.

How to run for cover and avoid proposing a descriptive brand?

Asking the right question and then wondering if the naming created can somehow serve to describe the company, product or service for which the brand is being studied.

If so, it is almost certainly a descriptive trademark and therefore cannot be registered.

What if the customer specifically asked for a descriptive trademark?

First of all it is useful to point out to him that a trademark of this type is not legally protectable , therefore, if one day a competitor wants to use his own name, he could do nothing to oppose it.

In fact, the law establishes that a descriptive trademark can be used , but no one can appropriate it by registering it as theirs exclusively, because generic terms , such as that of our example (Sport Watches), must be available to everyone .

It is also possible to propose to the customer to use the descriptive name in the payoff , which will therefore not be registered, and to devise a completely original naming , such as a neologism for example.

With a good promotional strategy , in the long run the brand name will position itself in the minds of consumers, as it has been for many famous brands (IKEA, ADIDAS, Samsung …) and the result will be a strong brand from every point of view , legal and communication.

Returning to our example, the (registrable) trademark could be “Olympo”. It is a term that does not refer to watches and that could recall the city of Olympia and the Olympic games, but without describing the intrinsic characteristic of the product, that is, of being a line of watches for those who play sports; while the payoff (not recordable) could be “sports watches”.

Second mistake: using generic and commonly used terms in commerce (both in Italian and in other languages)

For the same principle just described, the terms widely used in the trade such as “super”, “ultra” or “top” should also be avoided which, as well as the descriptive terms, according to the law must remain available to all (therefore they are not recordable).

Similarly, it is better to avoid generic and descriptive terms also in other languages , such as “LOL” or “Wow” in the first case and “Black”, “Star” or “Crayon” in the second. Companies today hardly limit their activities to the national market and increasingly export abroad as well . Therefore, if the chosen brand contains terms of common use or that can somehow describe the product or service in other languages , the competent office at European level or in the other countries in which the customer wants to operate, will reject it.

So let’s go back to our example on sports wristwatches: a name like “Olympo Watch” (watch = watch in English) has a descriptive component (Watch) and a non-descriptive one (Olympo). Only the combination with the non-descriptive term “Olympo” makes the combination of these two terms registerable as a trademark.

Third mistake: presenting the proposals to the client without having the opinion of an expert brand consultant

Presenting proposals to the client that the competent office would certainly reject is counterproductive for everyone. The best thing, therefore, is to identify a list of names and submit them to the opinion of a consultant expert in trademarks so that they immediately exclude those that would surely be declared null.

Once the names that may have the requisites for registration have been identified and after having presented them to the client, it would be useful for the latter to commission the professional to search for anteriority , to verify that there are no potentially dangerous brands or that could conflict with that choice. Finally, once it has been established that the identified brand is strong , it is absolutely advisable that it be registered for Italy and possibly for the countries where the customer wants to extend his business.

Only then will the company be certain that it will be able to defend its brand on the market and, if necessary, also in court.

Frequently asked questions about trademark registration

These are just some of the information useful for trademark registration. Everything you need to know has been summarized here, in the “Frequently Asked Questions” section of the site registraunmarchio.it .

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