15 September 2011

A trademark is a mark that distinguishes your goods or services from those of your competitor. It may be a distinctive word, an offbeat image or a combination of both. In order to decide what kind of mark would work best for your business, you should think about what aspect of your branding is likely to be marketable, and therefore most susceptible to imitation by competitors. You should also ask yourself how you intend to use your branding.

DISTINCTIVENESS

When deciding what kind of mark to register the overall decision must be based on the question of what needs protection. There is no point protecting a trademark that is not sufficiently distinctive since it will have little value. Including a logo can give what would otherwise be an unremarkable brand name the essential element needed to make it stand out and become memorable.

Consider for instance, the trademark for McDonald’s fast food chain. The logo is comprised of three main elements- the text “McDonald’s”, the prominent colours - French-fry-yellow and tomato-sauce-red, and the double-arched shape leaning in towards the centre in mimicry of the letter ‘M’. Any one of these constituents could potentially be registered. However, if McDonald’s had decided simply to register the text mark “MCDONALD’S” it would have been unlikely to have enjoyed the iconic status it has.

ENTIRETY

The trade-off for deciding to register a combined logo and text mark, is that each constituent element of the trademark is individually afforded less protection. Therefore, in the case of McDonald’s, while another fast food business would probably infringe McDonald’s combination trademark by operating under a red sign with a golden letter in the middle, (ie the overall look would be confusingly similar), a rival company which exploited a similar sounding name would probably not. Given that McDonald’s invariably displays its brand name suspended from within the golden arches of the logo, it is sensible that the full force of protection be afforded to the overall image.

INDIVIDUAL ELEMENTS

McDonald’s approach to branding can be contrasted with that of a company such as Nike International Limited. The Nike brand is comprised of three main elements- the distinctive Nike tick, the text mark “NIKE” and the phrase, “JUST DO IT”. Each element is registered individually. The benefit of so-doing is that each element can be used separately and retain protection as such. For example, a competitor sports-wear business is likely to infringe Nike’s trademark if it adopts a stylised tick to promote its goods, or if it uses a brand name phonetically or visually similar to “Nike”. By registering individual components, Nike is able to exploit a number of different elements under the same brand, be it a tick on the side of a running-shoe or a t-shirt with the instantly recognisable phrase printed on the back, affording each the maximum protection.