.Descriptive trademarks giving businesses a bad name

.
_PRESS RELEASE
Zone IP (The Zone Corporation)_
_22 March 2011_

_Trend towards descriptive trademarks giving businesses a bad name_

Business owners who give their companies a name that describes their
services or products – on the advice of marketers or because they think it
helps their search engine rankings – are giving their business a bad name.

Theodore Doucas of Zone Law and a consultant for Zone IP -- an intellectual
property management consultancy in Wellington – said his practice has
noticed a trend toward trade marks that reflect what the business does.

“Trade marks such as Car Repair Services or Home Cleaning Services can never
achieve statutory protection because they are descriptive and
non-distinctive. They are names that are unlikely to become an asset that
has value in its own right,” he says.

Mr Doucas, a former Assistant Commissioner of Patents, Trade Marks and
Designs at the Intellectual Property Office of New Zealand, says that in
contrast some of the most memorable brand names in the world have nothing to
do with what the company does.

“Apple®, Google®and Blackberry®are very memorable and don’t -- noticeably --
have anything to do with the kind of service or products those companies
offer.

“The best thing to do is make something up that has a good sound to it, and
then have a professional check it out for you.

“I see a lot of people who invest in branding, design and production only to
find that they’re infringing somebody else’s trademark – this is very costly
for a business, including in lost time and distraction.”

He also cautioned that many colours are also registered trademarks. BP®owns
its version of green in the petroleum industry, and in the chocolate
industry Cadbury®has dibs on the colour purple.

“Lawyers very rarely see eye to eye with marketers on this. We know from
hard experience that no matter what the marketing potential, it is less
costly and more effective to wrap goods and services around the brand,
rather than the brand around the goods and services.

“The fact is that you don’t need to tell people what you do. Your brand must
be made strong enough so that people recognise it and understand what it
stands for,” he said.

Mr Doucas said that purposely-misspelled names – done to capture matching
domain names – are not easy to protect either and most people just see them
as a spelling mistake.

_Ends/…_

.

© Scoop Media