A good trade trademark should posses the following attributes:
- It should be easy to pronounce and remember, if the mark is a word.
- It must be easy to spell correct and write legibly.
- In the case of device mark the device should be capable of being described by a single word.
- It should satisfy the requirements of registration.
- It should not belong to class of marks prohibited for registration.In general a manufacturer of goods or service provider is free to adopt any mark to distinguish his goods. There are few exceptions to this i.e. eg. Emblems and names (prevention and improper use) Act.,Purely descriptive or laudatory words like best, hi quality, perfect, premium, perfect, excellent, names of places of industrial or commercial importance potentially suitable for manufacture of goods, names of gods and goddesses, surnames, certain numerals and letters , words phonetically or visually similar to reputed trademarks and so on are unsuitable for trade marks.
CHOOSING A GOOD TRADE MARK FOR NEW PRODUCTS OR SERVICES
AVOID TRADEMARK THAT CANNOT BE REGISTERED
There is no point investing in a trademark that you can’t register. Registering the mark protects it from competitors, ensures your ownership rights in the mark and makes it easier to enforce your rights against copy cats. Eg.Those that have already been registered by others for same services
As you will read below, certain types of words are inherently difficult to register and should be avoided.
AVOID PURELY DESCRIPTIVE WORDS
Words which describe the nature or quality of the goods or services sold with the mark are not permitted to be registered. Hence, the mark “Cold Beer” for use with malt beverages cannot be registered because it describes the actual product being sold. If registered, it would prevent anyone from using the terms Cold and Beer to describe their malt beverage. Eg. Prime coat for paints, Food world for Restaurant. Descriptive terms cannot receive Trademark Registration unless, over a period of years, the terms have acquired a special, identifiable meaning in the minds of the public Eg. Surya lights, Reliance
AVOID SURNAMES
Surnames usually cannot be registered as trademarks. The mark “Wilson Power Boats”, for instance, is a poor choice for a trademark because the word Wilson is a surname (and the rest of the mark is descriptive).However some Family names would make it distinctive.
AVOID CONFUSING TRADEMARK
A trademark which is confusingly similar to a registered trademark cannot be registered. Hence, the mark “Sun-Screen” cannot be registered if the trademark “Sun Screen” has already been registered for a similar type of product. A search of the Indian Trademark database is a good idea.
AVOID GENERIC WORDS
The goal is to select a trademark which is as unique and distinctive as possible; therefore, avoid generic words. Examples of generic terms include “green, superior, Indian, Kerala, deluxe, gold, premium and a plethora of others. These words are generic and if you incorporate them into your trademark, you ensure that you blend into the crowd, not stand out in front of it. You will have to disclaim such words while registering a Trademark.
AVOID TLAs (THREE LETTER ACRONYMS) AND NUMBERS
IBM, CTV, and ATT are distinctive trademarks because their respective owners poured tens of millions of dollars into making the marks famous. Even a poor trademark can be made famous if you throw enough money at it. But acronyms are intrinsically difficult to remember, while words, especially colorful words, are easily remembered. Hence “ELS Software Solutions” is not as memorable as “Volcanic Silicon.” Likewise, avoid using numbers in a trademark as they tend to be less memorable. Furthermore, there are a limited number of unused acronyms available, so there is an excellent chance that your TLA will be confused with someone else’s.
AVOID SUGGESTIVE MARKS
A “Suggestive” mark is one which merely suggests some quality or characteristic of the services. If the mark is determined to be suggestive, and non descriptive, the mark is entitled to Trade mark Registration and to the same protection as a “distinctive” mark. However, the Suggestive marks are very weak, in that they often do not provide the owner with the ability to stop others from using marks which are very similar on similar goods, or even identical on different goods.
AVOID FAMOUS NAMES
Avoid famous and popular trademarks. Some names are prohibited from being registered at the Trademark registry. Eg.Philips, Bajaj, Telco,Volvo, Omega,Intimate etc..
PROHIBITED MARKS
Avoid marks which are prohibited by Swami Vivekananda, ISO, Interpol, Aldrin, Balaji, National, Nehru etc..
USE INVENTED WORDS
Invented words are words which do not exist in any language, apart from your trademark. Examples include Spandex, Exxon, Kodak, Viagra, and several other famous trademarks. Invented words are a good choice for use as trademarks because they are not descriptive and they tend to be quite distinctive. You can create an invented word by simply combining parts of other words. For example, Microsoft is a combination of “Micro computer” and “software.”
TRY ANIMAL OR PLANT NAMES
Animal and plant names tend to be quite memorable and, if used appropriately, can convey a good image while still being distinctive. Apple Computers, Tiger Balm and Ford Mustang are good examples.
MAKE SURE THAT THE FIRST WORD IN YOUR TRADEMARK IS DISTINCTIVE
It is often necessary to add descriptive words to the trademark in order to convey what is being sold or marketed in association with the mark. If generic words must be included then it is doubly important to ensure that the first word of the mark is as distinctive and unique as possible.
Following are some trademarks that are strong because they are not descriptive of their product:
o Apple for computers
o Red tape for shoes
o Kodak for film
For marketing purposes, you may want to link a fanciful or suggestive mark with a word or phrase describing your product or service, i.e. Kodak Film, so that your customers do not have to guess about what you are offering. But this is far better than choosing a descriptive mark that has great potential for conflict with other descriptive marks and that will never be granted broad legal protection. Taking this approach is likely to save you lots of money in attorney’s fees and many problems down the road.