How to create a trademark that is commercially sound .
While trademark law is specific to each country, the underlying principals of a commercially sound trademark are not. Some of the ‘how to’ in this article is specific to Australia and some of it is equally appropiate in every other countary in the world. As holder and designer of more than 10 trademarks, here are my tips on how to create a trademark that will be commercially sound.
Introduction – Create a Trademark
“A good name is better than riches.” – Miguel de Cervantes
The process and laws required to create a trademark, is completely separate and distinct from “Business Name” registration and “Company Name” registration.
The latter two (2) are simply contact addresses required under laws relating to business administration. In Australia, business name registration provides a means of identifying the owners of the business and is obtained under state or territory legislation. Remember, registration of a business name does not provide proprietary (exclusive ownership) rights. These registrations are simply how the Government agencies identify you from the crowd.
NOTE: NEITHER BUSINESS NAME OR COMPANY GIVES YOU PROTECTION, OWNERSHIP OR EXCLUSIVE RIGHTS TO THE NAME!
Only a trademark can give you these rights. Following are some insight into the way effective trademarks are created. We look at the background, name, look and the investigation process.
Background to trademark
What is a Trademark?
A trademark is a sign used commercially to distinguish your goods and/or services from those of another. It can be either a letter, number, word, colour, phrase, sound, smell, logo, shape, picture, aspect of packaging or any combination of these.
Few of us will have the brilliant business idea that gains for us Intellectual Property protection under a Patent or a Registered Design, but there is no excuse for not getting the protection and ownership of a trademark. It is totally within our power and budget to do so.
Executed properly, your trademark will ultimately become your single most valuable asset. Think about what would happen to COCA-COLA who with all their property, factories and world-wide integrated distribution systems, were forced to change their name – They would be broke in months. To give an idea of the value placed on this intangible asset we turn to Kurt Badenhausen and Maya Roney from the New York marketing consultants Vivaldi Partners who state “Coca-Cola has long been recognized as the world’s most valuable brand. Its current value: $55 billion.” An analysis of the next 40 is detailed in the Table – Brand Value Forbes.
Brand value, in relation to a firm’s overall capitalisation, is calculated to contribute more than 20% of firms like – EA Sports/Games, Coach, Nike and Toyota and contributing to more than 50% of the firm’s total capitalisation for brands like Victoria’s Secret, Harley-Davidson and Pixar.
If you get it wrong at the start, it can cost you a fortune in trying to get the right protection latter. Patent attorneys don’t come cheap and the trademark office is bound by strict governing laws. Moreover, your competitors have a vested interest in stopping you at every turn with their objections. Then, while you fight out the years in the registration process your name in the market is growing in value but you still may get no protection or ownership at the end.
Yet, all this can be avoided and the costs of registration can be as little as a few hundred dollars if you get it right at the start.
Most first timers, attempting to name their business, will try to incorporate a clever combination of names that explain to the market what the business does, believing it to be important. It isn’t. The trouble with this approach is that it is almost impossible to trademark, protect and get ownership of common use names – even if you present it in a unique, fancy and graphical way. The strongest trademark registration primarily deals with the underlying name and letters – not how they are represented. It is best to own the name not just the way it is represented. In nearly 100% of cases, the leading global brands do not describe the products they sell – so, neither should ours.
In relation to names explaining the product: Where is the relationship between TOTOTA and car, MacDonald’s and burgers or Kodak and film? These firms establish and protect a name and then let the marketing explain to the customers what they do. Nothing stops you from defining your business and clever concept under the logo/trademark in a byline (i.e. kratz – “mowers that work”)
Think about a firm in Sydney that named themselves “Strathfield Car Radio” because they were in the suburb Strathfield and they sold car radios. Problem is, they expanded and are now in Brisbane selling mobile phones.
They had to change to the name of just Strathfield, a name that is impossible to protect because it is a geographic place in Sydney but they have invested too much money in it to change it to anything else now. 
The lesson here is to make sure the trademark provides flexibility for future growth and possible change of direction. Follow COKE’s lead – change the by-line often (’ the pause that refreshes’ ‘The Sign of Good Taste’ ‘Be Really Refreshed ’Things Go Better with Coke’ ‘I’d Like to Buy the World a Coke.’ ’Coke Adds Life to..’Have a Coke and a Smile’ ’Coke Is It!’.’Can’t Beat the Feeling’ ‘Always Coca-Cola’ ’Coca-Cola. Enjoy’ ‘Things go better with Coke’, ‘The real thing’, ‘Coke adds life’ ‘The Coke side of life’) but never the trademark.
It’s not personal
Following on from the theme above, most new first timers want to name their venture after themselves or something with some emotional value to them. This is usually because they see themselves as parent (owner) of the child (business). Whilst this is understandable, it fails to be commercial on two fronts (1) the new venture must become an entity in its own right because some of the decisions it must make in the commercial world will be at odds with your social world and (2) unlike children, there should be a very clear plan to exit (sell) this business sometime down the track. A smart entrepreneur will start with a name that makes this transition simple and desirable to another and not personally linked to them.
In Australia, “TM” can be used by anyone in business. It simply means that this is a mark used by the company in the conduct of its business. It inidcates an unregistered Trademark. It offers no protection but it is a clever symbol to put on the Top Right of your logo while you await an official registration. You could do this for three reasons: (1) because it fools most competitors into thinking that you have it registered (2) gives your young firm a more credible presence and (3) the visuals of your logo won’t change much when you finally replace the TM with the ®. NOTE: The ® can only be applied to those trademarks that have been registered by the Government.
When you get registration for your Trademark in Australia you only get it for Australia (or your country of application). You need to complete the process with every country where you think you need protection. Make inquiries with IP Australia – they can help or you may need to engage a Patent Attorney for this exercise. The process used to register trademarks internationally is called the Madrid Protocol
“The logo is the trusted signature that authorises every transaction” PB
So now, go get creative. Come up with a name that currently does not exist in the English language. KODAK was a made up name when it was first registered. It does not have to relate to your product but you can make up the name from bits of your concept, service or product.
TIP – Go look at long established words and carve out bits of it, add an “s” to come up with your own made-up-name. (i.e. Repatriation could become ‘repas’ ‘epats’ ‘atris’ ‘riats’ ‘atris’ ‘tions’)
Be aware that there are some prohibited words (i.e. words that no one can register) You will need to look up the web site “www.ipaustralia.gov.au/” to get the current listing. Currently they are signs containing the word “Patent”, “Registered”, “Copyright”, World Intellectual Property Organization (WIPO) signs, Austrade, C.E.S., Olympic Champion, Repatriation, Returned Airman, Returned Sailor, Returned Soldier. Prohibited words Australia
Other un-registerable words
Geographic place names
Common surnames – no more than 1,000 Australia wide listings in White Pages
Common trade names – Ones that are commonly used in the your trade to describe goods or services. (i.e. Strawberry for drinks, Global for freight, Sandwich for take ways …….)
Ambiguity in phonetics
Try to avoid letter combinations that can be pronounced two different ways. (How do you say “Adidas”? Add –e-das or Ad-dee-das? Is it nike or nikee? Remember to be a good logo it needs to be a made up name – so the problem is that no one will know how to say it. Look at the name that you create and make sure it can not be pronounced a different ways There are only 26 letters in the English alphabet but there are 44 sounds. Watch out for (“c” carol, cindy) (“oo” pool, look, food) (“a” bat, hall, day) (“e” met, peel) (“CH” chin, stitch) (“o” log, so) (“u” cup, usual) (“p” plan, phone) (“g” gym, grape).
Try to keep the name at about 5-6 letters. Any longer that that and you risk your customers shortening it in a slang version. David Jones is now called by customers DJs, Myer Emporium is called by customers Myers, British Petroleum – BP, Woolworths – Wollies, even Macdonalds gets – maccas.
Think about COCA-COLA – customers eventually started calling it COKE so they were forced to protect that name as well and even promote it along side their established brand. If they had their time over again I am sure that they would have just registered and marketed COKE. If the market calls you by a different name then you will need to protect that name as well and then which one do you use in your marketing? (you have just halved your brand impact and penetration into the market). Think of the cost of protecting two names? So, start with a name like Kia, Sony or Hertz and customers will never be able to shorten it.
Also the shorter the name the more likely it is that you will be able to make your name your visual logo, which is another advantage I will discuss later.
The other thing that the customers do to you is that they add an “S” onto your name, particularly if you are a retailer or in hospitality. Think about Jo-Jo’s, Coles, Katies, Rockmans, Lowes …. “Meet you at Myers” That is why you end up with an “s”. They are not going to say “Meet you at Myer Emporium”. So, if possible incorporate an “s” into your name. This is critical for retailers and hospitality businesses – not so important for others.
End with a “Z”
We all saw the movie – well those of us with kids did. Everyone knew it was a movie about ants – even with the “Z” substituted for an “S”. You too can use the “Z” instead of “S”. They are both pronounced the same, they even look the same but to the trademark office one is able to be registered one is not.
The “Z” allows registration. The drawback is when someone pronounces your name to another and they use that standard spelling “s” in a google search and may end up somewhere you did not want the client to go.
Letters to avoid
If at all possible – Don’t pick a name with “j” “p” “q” “y” in the body of the name. These letters, with their lower case ‘dangly bits’, create havoc when it comes to signwriting. You can overcome this by presenting you logo in uppercase but that is a ‘logo look’ that is vastly overdone because time honored businesses have been forced to create capital letter acronyms when converting their names to a logo. ANZ, AMP, QANTAS, BHP, HSBC, QBE, CBU, NRMA, RACQ, AAMI …. How much more visually appealing and unique are the lower case logos. Capital letters don’t have the same visual variation that lower case letters have. Look at how National Australia Bank have chosen to present themselves … lower case “nab”. It stands out!
If you do use a lower case logo with a ‘dangly bit’ – think about the amount of white space that is created from the bottom of the “y” to the top of the “t”. Given the same space – a name with a ‘dangly bit’ is only about two-thirds the size of a name without one. You have therefore reduced your impact on fixed space advertising, like … football sign boards or shop awnings.
CAPITALIZED in text
When representing your logo in text form (documents) it is most practical to express it in ALL CAPS. This makes it very clear to the reader that you are talking about the brand and not some description or similar concept. This is a practice that has been followed by COCA-COLA and a good one to copy for us.
Logo is the Name
Many companies have two trademarks. Their name and a symbol. (i.e. Holden & the lion’s head, Nike & the tick “swush”, Audi and the rings, Honda and the H) If you are going to be engaged in the international market and especially into non-English speaking countries – then a symbol is a must. Think about the value of a famous trademark in Turkey being introduced into the Australian market but written in Arabic. Same goes for us in the international non-English scene. Although, thanks to the web, English seems to be winning the race to become the international language – it is already the international language of business.
The trouble with two trademarks (logo & name) is the cost of maintaining the two and the diluting affect on your market impact and penetration. I think it best to just keep with the name as the logo. (i.e. Ford). This gives you every English speaking market in the world to grow your product. Let the multi-national that buys you out worry about adding the symbol.
Those starting off with an export ides and in need of a symbol – then try to incorporate the symbol beside the name. Present the two together as your complete logo. They can be separated out later if required.
“Variations in your trademark are like signature variations on a cheque – they create doubt at the very time that you are wanting trust” PB
Whilst trademark registration is about the word and letters, it is the look of the trademark that registers mostly with the market. For example, you are traveling at 100 klm per hour down the highway and you run over a red can – you know instantly it was a COKE can. Not because you read the words but you saw the picture.
Many researchers including Reicher (1969)  found that we recognise words as complete units and patterns rather than the sum of letter parts.
If you have not already done the test to show that the brain actually sees the word visually as a picture or combination of letters and is least concerned about the order.
“I cdnuolt blveiee taht I cluod aulaclty uesdnatnrd waht I was rdgnieg. The phaonmneal pweor of the hmuan mnid aoccdrnig to rscheearch at Cmabrigde Uinervtisy, it deosn’t mttaer in waht oredr the ltteers in a wrod are, the olny iprmoatnt tihng is taht the frist and lsat ltteer be in the rghit pclae. The rset can be a taotl mses and you can sitll raed it wouthita porbelm. Tihs is bcuseae the huamn mnid deos not raed ervey lteter by istlef, but the wrod as awlohe”
(Incorrectly attributed to Cambridge University but quite possibably the work of Ph.D. candidate at Nottingham University, Graham Rawlinson, who did write a thesis ‘The significance of letter position in word recognition’ (unpublished) in 1976.)
I like rectangles because very few things in commercial life are square or round. Think, TV, Sports ground sign, Under-awning sign, Highway billboard, Side of buses and Movie screen just to name a few – all rectangles. So what ever symbols you use to represent your logo/name, encase it within a rectangle. If you want – the corners can be rounded.
There is a belief out there!!!! – that there is a perfect shape in nature, mathematics and one that is most pleasing to the eye. It is a shape that conforms to the “golden ratio” of 1 is to 1.6 (i.e. 1 unit for the side and 1.6 units for the top/bottom) – It may be a bit mystic but I think it works (try it out) The Golden Ratio
Don’t try anything fancy like tilting the text on the side – Schweppes have all sorts of problems presenting their logo in this way when the rest of the world presents only on vertical and horizontal planes.
Like Henry Ford said about the colour black with cars , you can choose any colour as long as it is red. That’s right, as close to COCA-COLA red as possible (RGB 204 0 0). They have gone round the world and have put their logo on every conceivable type of material. So no matter what you plan to reproduce your logo on – you will have the exact red to match. Not all advertising mediums offer a choice of colour – think about the yellow pages (only red, white and black).
The only other colour with similar benefits to red is Ford blue. Sorry guys, that is about it!
As for a second colour – go with white. Every possible medium has a white (opaque) base option. Black is the only other colour option that almost matches white for common use. Think printing! So that’s it folks – Combinations of red, blue, white and black.
Now whilst the logo colour is limited, your corporate colours need not be. I believe that your logo colour should only appear in the logo itself and not appear in the corporate colours. This makes sure that there is contrast and impact.
Don’t underestimate the importance of colour in representing you name. Think about an orange or blue COKE can. Would you reach in and buy it or leave it for someone else? 
Look at the visual impact of logo’s presented as colour on white as opposed to white letters on a solid colour background. I have seen FORD, ANZ, NAB and even COCA-COLA do it both ways and the visual impact between the two is startling. You are not even sure if it is their logo. The visual representations are completely different. I have always been a believer in the boardered solid colour background with white letters.
Everyone thinks that you need a modern or unusual font. Think about COCA-COLA, is certainly not a modern font although it is unique (but only because it is old). Two type-faces dominate our lives (Times Roman with the little serifs and the clean lines of Arial). Times Roman (newspaper text) is best for big chunks of text where Arial is best for headings. I have always liked the clean lines of arial for logos. There are other fonts with clean lines and these are appropriate in meting this objective (i.e. Verdana, Helvetica)
The beauty of compiling your logo from standard fonts is that you can reproduce it easily yourself or you can get a signwriter to do the same without creating “bromides”. In the early days you want your customers to easily read you logo but at the same time see it as a visual signature representing your business.
|Borders are Important
Don’t forget to boarder your logo. Boarders authorize things. It means completeness. Think about the road signs – they are all bordered. They are complete – and so you can trust them.
Also think about the times when your logo will be on a larger background of the same colour as the background of your logo. Where does you logo end?. Without a boarder it changes the visuals of your logo presentation. When COCA-COLA place themselves on a red wall they will define the part that is their logo by using a white boarder. It keeps the visual logo consistant.
It may also be an advantage to double boarder so that if the background is the same as your boarder then the inner boarder still holds the visual consistancy (i.e. Ford).
Trademark Investigation Process
Step 1 – Type your made up name into the internet window “www.yourmadeupname.com” . If nothing comes up good – otherwise start again with a new name.
Step 2 – Then type “www.yourmadeupname.com.au” . If nothing comes up good -otherwise start all over again with a new name.
Step 3 – Type “madeupname” into google search and see what comes up. Make sure no major corporation you recognize is using it as a product name. The fight is not worth it. Note – Don’t type your new found name in too many times – I am sure there are internet spies watching for a critical number of name requests only to jump in and register it ASAP in the hope of an on-sell.
Looks like you have the internet domain protection – now we need to check Australia.
Step 4 – Log on to the following site name search Australia and type in your name – Note: make sure you select the “All Names” button. You are checking for two things here (1) a company/association name that bears your name (i.e. madeupname Pty Limited) and (2) a business name that has been registered by someone (i.e. yourmadeupname Brisbane”. You can still register your “yourmadeupname” if none of these businesses has made a trademark application – but it is not worth the risks or the fight. Just go back and find a free-from-encumbrances name.
Step 5 – You have got to this point knowing it is very unlikely that anyone has registered “madeupname” as a trademarks. But we have to check. Log on to Trademark search Australia “enter” as a guest and type in ‘yourmadeupname”. Look closely at what comes up. There may be something similar already registered, but before you lose heart – check out what class the trademark is for. There are 45 classes, meaning you could still get your name registered in a different class to the existing similar trademark. (i.e. they are in car parts and you in food) A very good chance you would still get the registration.
Step 6 – One final step before you register it is to just see what the word may mean in another language (i.e type “yourmadeupname meaning” into a google search) and make sure it is not going to be offensive to a section of the Australian public.
Step 7 – Design and print your logo and take it down to IP Australia Level 1, Grant Thornton House 102 Adelaide St Brisbane QLD 4000. Talk to the staff. Pay the $150 for a single class. (two/three classes if you think it warranted)
Step 8 – Log onto the internet and secure the domain names “yourmadeupname.com” and “yourmadeupname.com.au”. Maybe $30 for each.
Step 9 – Sit back and wait to be contacted by the Trademarks office. It may take 1-2 years but you will have protection from date of lodgment.
Other Note & Summary
Two things about a Patent Attorney I have found are (1) they are the nicest lawyers you will ever meet and (2) they are the most expensive for what they do. If you have the cash and have an idea (Patent, Design) potentially worth millions then engage them immediately. Also, remember if you get the process wrong then you will need to engage them to try and protect your asset.
If it is just a trademark you need to register then I have found the staff at IP Australia both knowledgeable and very helpful. I found them very much ‘on your side’ and the best part – they don’t cost you.
There is no right and wrong with trademarks. Just low-cost Vs expensive, easy to implement Vs hard to implement, effective Vs ineffective, registrable Vs unregistrable, easy to reproduce Vs hard to reproduce …. and you get to choose which one it will be. The most important thing is to replicate the trademark time and time again in the exact same way in order to get consistent market recognition, early traction and ultimately a sustainable share of the market.
These thoughts are mine alone and are offered as insights from my personal journey through the minefield of logos and trademarks. But then again as it is with most decisions … to each their own.
These days Peter Baskerville
likes to call himself a New Venture Architect. This is because he is keen to impart the knowledge and insights he has gained from establishing over 13 new ventures (involving over 30 outlets) to help budding entrepreneurs of today design and build sucessful new ventures.
As a teacher, mentor and coach to hundreds of ‘real world’ new venture intenders, Peter now wishes to share his expertise with the millions of intenders scattered across the globe who have been brought together via the medium of the internet. He has contributed many works on entrepreneurship here on Knol
and on other content publishing platforms. He fully intends to continue expanding this body of work as well as provide value-added resources via his website, designed to help people start and succeed in their own business.