Trademarks (Part 2) – are you sitting comfortably..

Aim of this article: to give entrepreneurs an introduction to trademarks; by reading these three articles, you will gain a working knowledge of trademarks, easily avoiding a huge pitfall that has befallen many an entrepreneur. (Part 1 is here Part 3 is here).

3. Descriptive terms

Okay, you’ve a decision to make about the “type” of name your going to choose. The choice: descriptive term vs coined term.

Let’s take the word of the moment: Alphabet, as shown some love by Google.

The descriptive = “Alphabet”
– trademarks restricted to very specific classes.
– other parties can use this word, possibly benefiting from your marketing.
– possible SEO difficulties [at least Google can circumvent this :o) ].

The brandable = “Alphabetiolini”
– more trademark law protection as it’s completely made up.
– really hard for other parties to use this term.
– nice SEO advantage versus the descriptive.

Some comments:

A descriptive domain – such as say BikeParts.com – can be used by anyone to sell, make or distribute bike parts. No trademark over these words being used in their descriptive sense should be granted on the principal trademark register. Someone might be able to get a stylised mark involving a logo, but that would not stop anyone using the term in it’s descriptive sense. They could also maybe get it on the supplementary register. This offers must less protection then the principal register and confirms the term as a descriptive term.

On the other hand, take the following scenario: a pair of designer denim, replete with expensive rips, called ” bike parts”. This is different. The name is not being used in its descriptive sense – hence full protection on the principal trademark register is possible. But as long as you are using say, BikeParts.net, in its descriptive sense, that is no problem.

A quick aside; these descriptive terms can make for some serious, bad ass domains!

4. Stuff to note

I’ve gone into a bit of detail here, in order to make the following points:

1. Trademark law can get heavy and you may need an expert.

2. 10,000lb Gorillas with a trademark on a descriptive term – it’s your perogative. Personally I would avoid them no mater how descriptive I think the term is.

3. The good news is that many, many names will have absolutely no trouble attached. Full legal clearance should be obtained before going ahead. So if the dot com domain is free, its more unlikely there is a trademark in existence for the term and the sea is calm. But complete the checks.

4. Trademark infringement- We’ve a separate blog about this and you can access it here.