“Don’t sell the steak — sell the sizzle” -Elmer Wheeler
…is now an old adage in the field of marketing. Marketing caters to a clear business need for clients recognizing them. Recognition comes from having a Brand name that keeps reminding the clients about the service/product being provided.
And, It takes a lot of pain, perseverance, investment to create that Brand name which is recognizable and has a definite recall value with the Customers.
The Journey towards creating such a Brand name starts from registering a Trademark in business’s local Trademark office.
A registered Trademark has been found to be of 16% higher value over the ones that have not been registered.
Further, a registered Trademark deters competitor, counterfeits from adopting a similar name.
Yes, there are costs involved in filing, preparing and prosecuting such a name with the Trademark Office. Our experience suggests that the such costs are significantly reduced when Trademark is Distinct.
You thought your product’s name was distinct, but Trademark Office rejected it, why?
In India, The Trademark Act, 1999 Section 9(1)(a) lays down, that
“The trade mark (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person” …forms an absolute ground for refusal.
So it means that the Trademark(TM) office could determine that your given name does not provide distinctive character to your product and refuse registration.
Over the period of time, Courts have opined at multiple instances, eg. here and here that there would be certain criteria, which would whether a Trademark could be construed to have acquired distinctiveness.
We took up some of the facets and tried to prepare an algorithmic approach for you to select a name, such that next time when you file for registration, it does not get rejected:
Step 1: Does the selected name consist of a single character or number in it eg. Q or 5? Stop! Go to Step 4.
Step 2: Does the name exactly correlates to your business- eg. Lemonade for Lemonade stall? Stop! Go to Step 4.
Step 3: Does the name already appear in Google searches for a similar product or services?Stop! Go to Step 5.
Step 4: Add additional characters unrelated to your business. Go to Step 5.
Step 5: Get a Trademark search done. Go to Step 6.
Step 6: Work with your Trademark Attorney to file in correct Trademark Classes and countries.
This is an opinion piece and must not be construed as a Legal advice.
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