Don’t go breaking my mark

The chocolates have been eaten and the flowers are starting to wilt. Now the warm and fuzzy glow of V-Day has dimmed, it’s time we talk about break-ups. Break ups can be hard, messy and costly. Just ask Break-Up Boss® creator, Zoë Foster Blake. Last week, Zoë decided to part ways with her new Break-Up Boss® clothing line. The reason for the shock split? Trade mark infringement.

Zoë handled the matter in her usual classy and humorous style, issuing this statement on her Instagram:

Earlier this week I launched some complementary merch, featuring the word ‘Boss’. Obviously, being awesome at business, before I manufactured many items I made SUPER sure to NOT check if there were any trademark issues around the word ‘Boss.’ HA HA HA TURNS OUT THERE IS!!!! A very well-known international fashion brand called dibs on the word a long time ago! And good on them. It’s a fantastic word, and they deserve it. Annnyway. We obviously apologise for any confusion this may have created, and we’ve removed those items from sale. We’re gonna re-design and re-launch again soon. (This time with added due diligence.) For now I’m just gonna get back to this sneaker line I’m working on. Thinking of calling it Now I Know Everything. (Or ‘Nike’ for short.)

The response from Zoë’s followers was overwhelmingly positive, with the majority, including yours truly, applauding her witty and classy response. It’s a masterclass in PR. On the other hand, there was also utter disbelief and outrage that someone could obtain a registered trade mark for the word “Boss”. How dare they?! It’s a plain old English word?! Won’t someone think of the children?! There were also plenty of folks offering suggestions on how to change her use of the word “Boss” to overcome the trade mark snafu; none of which would likely get her out of the jam by the way.

Given the confusion, shock and horror around trade marks and Zoë’s experience, let’s have a D&M about the things you should consider when choosing a name for your brand and business. These tips will help you choose a name that you’ll love but will also help you avoid potential heartbreak and headaches down the track.

Don’t get attached

Choosing a brand name is a bit like dating. Take it slow, put some thought into it and don’t get too attached early on. Absolutely consider a name that hits you right in the feels but keep an open mind. Also consider coming up with a few alternatives. There’s nothing worse than getting invested physically, emotionally and financially in a name, only to find that you can’t actually use it or protect it effectively.

There is no box

Don’t think outside the box. Get rid of the damn thing. Consider a fanciful or inventive trade mark with no particular meaning, which will provide you with a strong mark and the broadest scope of protection. Examples of fanciful trade marks include KODAK® for photographic goods, GOOGLE® for internet search engine services and PEPSI® for soft drink products. Trade mark registration is generally a cake walk for these types of marks due to their distinctive character. This distinctiveness also eliminates or minimises the chances of anyone else needing to use your fanciful mark for any purpose, other than as a trade mark. This will enable you to quickly weed out and enforce your rights against anyone trying to take advantage of your brand and reputation. But with no obvious or inherent meaning behind a fanciful mark, you will need to invest considerable effort into marketing and educating consumers about your brand and the associated products or services.

The odd coupling

Being creative doesn’t mean you have to reinvent the wheel, or in this case language. The next best thing is to choose an arbitrary mark. These marks use real and existing words but have no connection with the products or services of interest. Cue the mark “BOSS” for clothing. The odd pairing of a known word or words with unrelated products or services will also provide a strong trade mark position. It should be noted that registration of these words as trade marks, doesn’t prevent use of the word in its ordinary manner but simply prevents anyone from using it as a trade mark. For example, APPLE® is an arbitrary and registered trade mark, having no meaning or connection to consumer electronic products. The registration doesn’t prevent anyone from using the word “apple” to refer to or describe an actual apple. But come close to using it as a brand and you’ll likely receive some interesting mail. And no, it won’t be fan mail.

Descriptive disadvantage

Ever noticed how there’s no exclusive or registered rights for the word “wine” for wine products? There would be rightful backlash if one winemaker was granted exclusive rights to use the word wine, to the exclusion of all other plonk makers. It’s understandable and tempting to adopt a mark that is easy to remember and is relevant to your business. But avoid opting for purely descriptive words or terms that directly describe the nature, quality or characteristic of your products or services. Your descriptive mark will likely encounter significant difficulties with trade mark registration. Worse still, you’ll face a constant uphill (and potentially costly) battle trying to prevent others from using your descriptive mark to genuinely describe their own products or services. That’s not to say that descriptive marks are impossible to use and register as trade marks. But these trade marks often have a long history of use behind them, not to mention the considerable dollars spent on marketing to acquire distinctiveness in the marketplace.

Anything but generic

Avoid adopting any generic and commonly used words or expressions, especially if they are common to your particular industry of interest. These types of marks fall into the same class as the purely descriptive marks above and simply can’t function effectively as trade marks. Aside from the unfair competition it would create, imagine the how the English language might be butchered if generic, common or purely descriptive words and expressions could attain trade mark rights.

Subliminal messaging

Suggestive marks are those that indicate or allude to a quality or characteristic of a product or service, rather than directly describing the products or services. Depending on the context, these sorts of marks can be really effective, as they can hit the sweet spot between being marketable but also distinctive. Examples of suggestive marks include KITCHENAID® for kitchen appliances, AIRBUS® for planes and CHICKEN OF THE SEA® for tuna (although according to Jessica Simpson it’s actually chicken).

Say my name

Personal names may be used and registrable as trade marks, provided they pass the same distinctiveness tests all other trade marks are subjected to. Common first names or surnames are unlikely to be registrable as trade marks. Chances are that there will be a considerable number of other people with the same name, having an interest in using their own name in association with their own business. Full names are generally registrable, unless the name is a combination of two common names; sorry “John Smith” you’re probably out of luck in the trade mark stakes. Celebrities often look to register their names as trade marks, to safeguard and control use of their name in respect of certain products and services. And when it comes to savvy celebs, they don’t get much bigger than Beyonce, who owns a portfolio of trade marks for her name. She’s Sasha Fierce when it comes to enforcing her rights too. Late last year, Queen Bey was quick to notify a US brewery that she wasn’t exactly Crazy In Love with their “Bieryonce” beer product.

Location, location, location

Incorporating the name of the location of your business in your brand name might help clients find your business. But don’t expect to be able to easily obtain sole rights to use of the name; unless you’re Richard Branson and you own an island. Other traders in the same locale will also be looking to use the name of the place or region in relation to their own business. It’s also worth noting that some names are protected geographical indicators (GI) and serve to identify products or services originating from a particular territory or region. For example, “Champagne” is a protected GI and can only be used where the sparkling wine product originates from the Champagne region in France.

Lost in translation

Excusez-moi? It is possible to use and register foreign words as trade marks. The principles applied in the consideration of English words also applies to foreign words. You will need to consider whether the word has a descriptive meaning or relevance in its native language, but also whether the English translation would be commonly understood. Also, make use of Google® Translate when considering foreign words to avoid any unfortunate translations.

Do your homework

In the immortal words of Ice Cube: check yourself before you wreck yourself. Homework isn’t fun. But getting blindsided with a cease and desist letter, after you’ve started your business, is about as fun as a kick in the pants. With cleats.

Australia operates under a ‘first to use’ system, wherein a party that can demonstrate first use of a trade mark, has rightful ownership under common law. Notably, any subsequent use or trade mark application for the same name by another party, may take a back seat to any prior use. And if the name is a registered trade mark, you’ll probably find yourself on the receiving end of a cease and desist letter from the disgruntled trade mark owner.

With the above in mind, a general internet search is a great place to start. It can help identify whether a name is already in use. Be sure to check the availability of domain names and social media handles too.

Beyond a basic Google search, I’d recommend stepping up your homework efforts and conduct a search of the Australian Securities and Investments Commission (ASIC) database. It’s a common misconception that a business name registration will provide you with sufficient protection and rights. But this isn’t the case. ASIC simply allows you to search and register a business or company name, provided it’s not identical to any existing names. It is your responbility to ensure any name you register does not infringe any registered trade marks.

Gold stars will be awarded to anyone doing proper homework and conducting a search of the Australian Trade Marks Online Search System (ATMOSS), which will allow you to search for any registered or pending trade marks. There’s a whole host of factors to consider when comparing the similarities and dissimilarities between trade marks. An experienced trade mark attorney or IP practitioner can assist you with your homework.

And lastly, if you’re on the receiving end of a cease and desist letter, my advice is: Don’t ignore it. Don’t tackle it alone. Get professional advice. And if you have to break up with a brand name, take note of Zoë’s classy and positive approach. Handled like a true boss.

Photo by Kelly Sikkema on Unsplash

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