What makes a trademark distinctive?

The trademark you choose could potentially become your business’s most valuable asset. You could be naming not just a local start-up but a future global brand, so you need a truly unique trademark that will set you apart from the competition. Choose your trademark carefully! The strongest and generally most distinctive trademark is one that is completely unique - one that consumers can easily recognise and associate with you.  This means picking a completely original name - a  name that is made up or fanciful. 

Slightly less strong, but still distinctive types of trademarks that are distinctive are brand names which are either arbitrary or suggestive.

The least distinctive (and hardest to protect) trademarks are names that are descriptive. If at all possible, avoid names that describe your business or the nature of your goods and services as these are usually not registrable. For example:

• SPEEDY PLUMBERS for plumbing services

• SMART OUTFITTERS for a clothing store; or 

• BARGAIN BOATS for a boat retailer

Don’t use geographic names that are literal either such as MATARANGI ART GALLERY for an art gallery in Matarangi or PAPAMOA PAINTERS for a painting service in Papamoa.

Beware of including common surnames as these are often not registrable. For example, you might have difficulty registering PARKER REAL ESTATE for real estate services, because Parker is a surname and Real Estate describes the kind of business. The Trademark Office may take that the view that all the other real estate agents out there with the surname “Parker” shouldn’t be prohibited from using the term PARKER REAL ESTATE.

The table below takes the example of a number of different  shoe brands (real and made up) to illustrate the continuum from strong to weak trademarks.

What kinds of names should you use for trademarks?

1. Brand new words (Pun intended!)

Invented or fanciful names  are likely to be unique and therefore highly distinctive trademarks. These are an excellent choice for a strong trademark. Examples of famous brands that have unique, invented names include: 

• ZIPPO

• ZUMBA

• XEROX

• IKEA

• SONY

• GOOGLE (of course)

Some invented names are combinations of parts of other words, such as ADIDAS, which is an abbreviation of the name of founder Adolf (“Adi”) Dassler.

VELCRO is  a combination of the words "velvet" and "crochet”. Combining or abbreviating words like this could be a good strategy for naming your brand.

2. Suggestive marks

Many companies have created names that are made up, yet suggestive of what the company offers, by combining two words to create a novel trademark. Examples are:

• FEDEX (a combination of “federal” and “express”)

• NETFLIX for movies (flicks) on the internet 

MICROSOFT, DRIPHONE, PINTEREST, SPECSAVERS are other examples of names which were created by combining two existing words that describe some aspect of the product or service.

3. Random, arbitrary marks

Another, often strong form of trademark is one that uses an existing word, but in a context that is completely unrelated to the goods and service being offered, such as 

• AMAZON

• UBER

• APPLE

There is also a whole zoo of animal names used as brands. For example, GREYHOUND bus services, DOVE for cosmetic products, JAGUAR and MUSTANG for cars, CATERPILLAR for earth-moving machines, PUMA, CAT, GRASSHOPPER and CROCS for footwear and THE EAGLES for a band. Then there are well-known brand names that use a combination of an animal name with another word such as RED BULL, MAILCHIMP, HUSH PUPPIES, THE FAMOUS GROUSE, as well as animal sounds like TWITTER, HOOTSUITE, and BUZZFEED.

Some companies have very successfully used plant and fruit names to create distinct brands, such as BLACKBERRY for phones, RASPBERRY PI for a computer, BANANARAMA and RED HOT CHILLI PEPPERS for music bands.  

Volkswagen named a number of their car models after winds and weather:  SIROCCO, JETTA and GOLF (after the GULF STREAM).

4 . Generic and/or descriptive marks

These kinds of brand names are generally considered to be weak from a protection point of view. They are usually not registrable as they describe the goods or services. Sometimes you can succeed at registering a logo device for these kinds of marks, but this will not necessarily prevent other traders from choosing similar names for their brands. 

Examples of companies who have adopted descriptive names include: 

• JET COURIERS

• SMART PHONE REPAIRS

• COMPUTER GEEKS

In these cases, the businesses were strategic and they registered logos incorporating their names as trademarks:

It’s worth taking time to think up a unique name that will be a strong trademark - and easily protectable!