Legal Commentary

Common branding / trade-mark mistakes

By David Canton

That’s the title of my Slaw post for today.  It reads as follows.

It can be frustrating when a client comes for trade-mark advice, but has already started down a less than optimal path with their branding from a trade-mark perspective. If they have already used the brand and built up some goodwill, or have invested emotional energy into the brand, it can be difficult to change. Here are a couple of common issues that arise.

The most common mistake is adopting brands that are descriptive of the product or service. The thought behind that is “how else is anyone going to know what my product or service is?”

That is wrong for several reasons.

One simply cannot register a trade-mark that is descriptive. The trade-marks act says one cannot register a mark that is “…clearly descriptive or deceptively misdescriptive…of the character or quality of the wares or services?or of their place of origin”.

From a practical perspective, a brand that is descriptive doesn’t do a good job of distinguishing one’s brand from the competition.

A good brand is memorable, not descriptive.

The second mistake may or may not be a mistake depending on one’s circumstances and business plan, but it’s something that should be thought through early. A business often adopts several brands. Perhaps one for its overall name, and others for their individual products. That’s not unusual, and in some circumstances can be the right approach – but it may not be the best approach for a small or emerging business.

First of all, that means registering several trade-marks to protect those brands. And while registering a single mark doesn’t cost a lot of money, it can add up quickly if you have to register several. And multiply that by the number of countries one might sell in.

And if a business is trying to build up its brand image, this approach fractures the businesses brands along its product lines, rather than concentrating on one central brand that will gain recognition from all of its marketing efforts and sales.

It may be a better approach to create one memorable brand, and name your individual products in a more descriptive way on the understanding that those product names can’t be registered or protected.

Full post as published by eLegal Canton on March 30, 2011 (boomark / email).