How to trademark your brand

 

 

What would you do if one day, you received a cease and desist letter in the mail telling you that you could no longer use your business name as it was trademarked to be used by someone else?

You would have no choice but to change your business name and all of your branding. All of that investment into your brand would be lost. More importantly, you’d have to think of another name!

And if you have your brand on vehicles and signage and uniforms etc. that’s a bloody expensive exercise to replace all of that.

To avoid that nightmare scenario coming true, you may need to consider trademarking your brand. And in this episode, we speak with Binh Rey; an Associate Trademark Attorney with Baxter IP who will talk us through this very exercise.

Binh is known in the industry for her brand marketing and protection knowledge. She works with many branding and advertising agencies, helping to research and establish brand name availability to determine which can be easily registered and effectively protected both now and in the future.

I ask Binh loads of questions around what a trademark is exactly, what do they protect and what don’t they protect. Who should get one, who shouldn’t? 

If you haven't protected your brand with a trademark yet, then this episode is definitely worth a listen!

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Episode Transcript

Jane:

Welcome to the how to do marketing show Binh. I’m really looking forward to the chat that we’re about to have about trademarks, because I’ve got to say this is something that I’ve often grappled with over the years for my own business, in terms of trademarking my brand name, Dragonfly Marketing. Whether I do that, you know, when we come up with specific processes or taglines or whatever, I’ve always kind of wondered, well, do I need to, or, you know, if I do what’s involved how does that protect me? All of that sort of stuff. So the fact that I’ve got you here to clear up all of that, I’m sure I’m definitely not alone with some of these questions. So firstly, can you just explain what the definition of a trademark is? You know, what is a trademark, what does it do?

Binh:

Well, a trademark can be a letter, a number, a word, a phrase, a logo, pictures of packaging, sound, smell, or even a shape. There are five classes of protection that you can obtain through the world and the trademarks are per country and they last for 10 years and you can renew them forever. The interesting fact is Coca-Cola one of the most recognized brands around the world. The first trademark application they did was in the U S in 1892 or 93. And as you can see of course the brand has evolved over the years with different fonts, but the first trademark they obtained was in the in 1893. So you can renew again and again. So to answer your question about why are trademarks important? What trademarks do is give you the legal rights to that brand, but imagine if Coca-Cola didn’t trademark it, they wouldn’t have the legal ability to stop the competitors from using it.

Binh:

So it really gives you the legal rights where there’s a misconception in the marketplace, especially among business owners, that once they obtain a company named through their accountant or they get a trading name or the other thing is people think that just because they get a domain name registered, that they own that brand. And unfortunately all those registration which really is to identify you pre-tax, especially if you get a company name, they don’t actually provide you any legal protection to be able to use that brand. And we have seen, especially in the last six months that the larger brands are now cracking down on infringement. So we’ve had customers come to us and say, we’ve received a cease and desist letter from, you know, XYZ company. Because they say we’re infringing on their trademark. And some of these companies might have been around for a couple of years. They said, well, we thought that once we got the company name, that we were able to use that brand in the marketplace, and that is just simply not true. Jane, I hope I answered that question.

Binh:

You really did. And I think that I think your point around the fact that just because you’ve secured the domain name, just because you’ve registered the business, so you’ve done the search and the business name might be available, the domain name might be available, but that does not mean that you have trademarked or that you have, I guess, ownership or full ownership over your brand name. And I think that’s probably where a lot of people do get confused. So thank you for clearing that up. And you mentioned when you were talking about what a trademark is. So obviously you mentioned that, that it can be other things other than a business name, so a small business. What do you generally see the different types of trademarks that small businesses seem to get?

Binh:

Mainly small businesses obtain trademark registration for their business names. So what the customer sees them as in the marketplace to, in the case of Baxter IP, we’ve trademarked Baxter IP, and it’s what the consumers see us as. And the interesting thing is that there’s again, another misconception that your company name has to match the brand that your client sees you as. So Baxter IP is actually registered by our company, BPA assets proprietor limited, right? Baxter IP is owned by that company, but we didn’t actually trademark BPA assets, proprietor limited. We trademark Baxter IP because that is what we want the consumer to see our brand as. And that is what trademarking is all about. It’s what the consumer in the marketplace sees your brand as not, it does not have to match with your company name or your domain name or lately. A lot of people say, well, but my social media handles, well, it doesn’t even have to match that either. So, yeah,

Jane:

That’s a really good point because yeah, there’s a lot of trading names and business trading names, as you said, and that’s what might be registered with Asics, but it’s the brand that you’re actually protecting. It’s the brand that people know you will recognize you as and your trading name can be completely back, back office. So, yeah. Okay. That, that makes a lot of sense. So do you ever see small businesses trademarking, other things like do they, do they generally tend to trademark like iconography or taglines or, you know, specific processes or anything like that? Or is it generally just the business name?

Binh:

It’s generally the business name as well as product names that they give to their products or services. So imagine you’re you know, you’re a beverage company and you’ve got your main brand, but then you want to bring out clever product names that will identify your specific product with a brand. And if that’s important enough to that business owner, then that is another way that they can obtain favor registration to protect that distinctive aspect of the business. I see it a lot where businesses actually I can talk about this one because the client just between the trademark. So I’ve got a client that started as a cafe in Sydney and they are looking at selling their breads in Woolworths and Coles. Okay. So they trademark their company or their, the brand name or the business name for their cafe, but because they’re now selling a product, which is a fresh bread into Coles and Woolworth’s they need to trademark the product.

Binh:

So they trademark the product to ensure that it is going to be protected. And it’s really important that when people enter into a I guess a scenario where they’re selling into a large retailer, that they actually protect their brand. We’ve seen cases in the past where, when something’s selling really well it is known that sometimes the retailers go and trademark that brand so that they can stop that small business from selling to their competitors. And that’s happened in the past and I won’t name names, but now it’s happened.

Jane:

Oh my gosh, it sends a like, shiver of fear down your spine, doesn’t it? Because then of course, they’ve got, they hold that control, I guess if the retail has gone. And if the retailer has gone and trademarked the brand, are you talking about the product name of the product line?

Binh:

Okay. Yeah. You’re selling to you know, a big retailer and you don’t have your brand protected today’s product and it sells like hotcakes, right? They’re thinking, well, this is a really good selling line. Let’s see if they’ve trademarked it. And if the owner hasn’t trademarked it, the retailer could potentially go and trademark it. And then ask them not to sell it to the competitors. However, I must make a point here that in that scenario could be seen that if the big retailer obtains that trademark, the small business owner can try to revoke it on bad faith, because with trademark legislation, you’re not allowed to register a mark in bad faith insane that like I said, we had a scenario years ago where that happened to a manufacturer. He basically said I’m selling really well into this retailer.

Binh:

And I don’t actually want to sue this retailer because I want to maintain their business, you know, with me, so that manufacturer of that product actually did not fight the trademark on bad faith registration. Instead what he did was he had to create a whole new brand so that he can then sell the same exact product to this retailers competitors. Because once someone owns a trademark, they actually have the monopoly over that brand. And they have the legal rights to it. So in that scenario, the extra expense of that manufacturer, they had to create a brand new name for their product so that they were able to sell it to you know, the other retailers. And you bet you that when, when they created that new brand, they trademarked at the very start because they didn’t want that to happen to them again. Yeah.

Jane:

Gosh, that’s a huge lesson for us all to learn from. Thanks for sharing that. Now you mentioned before obviously, you know, social media handles that most businesses, you know, they’ll try and align their social media handles with their brand name. Well, that certainly makes a lot of sense to do that. And I would certainly recommend it as a, as a marketer, but what about hashtags? What hashtags trademarkable, because I know there’s a lot of brands that actually try and build some, you know yeah, some affinity with, with certain hashtags and particularly if they’re using their brand name in the hashtags, what’s the legislation around that?

Binh:

Well, with hashtags, it’s pretty much treated like a trademark. Okay. and I don’t actually think framing marking a hashtag is a good idea for a small business, the whole aspect or the whole idea around trademarking is to stop others from using, you know, that particular brand, but with hashtags. And you can correct me if I’m wrong because I’m not that up to speed with hashtags. But from  what I read is hashtag is really there to grow your client or your, the readership of what you’re trying to put out into the marketplace to attract new customers to it. So with a hashtag, the idea is that you want people to use, but with a trademark is trying to stop people from using it. So it’s not common for small businesses to trademark, it’s more likely that a large brand would trademark a hashtag to stop the competitors from misusing the hashtag.

Binh:

Okay. So I did some research on this for you. I looked up one of the most successful hashtag campaigns was by Coca-Cola. And I’m just using the era example because it’s, it’s an easy one to understand they, they one of their campaigns was share a Coke. Okay. And then they trademarked share a Coke hashtag #shareacoke to ensure that they I guess their competitors don’t use it, but just looking at the followers and the views of those hashtags. So #shareacokechallenge had, 79.6 million views of that and #shareacoke had 18.1 million views. And that just shows you that a hashtag is valuable to a company,  but you can’t control hashtag actively a hashtag is really there to promote or to add value to your promotion of your brand. And it’s easy for a large company like Coca Cola to trademark a hashtag because they’ve actually got their brand within the hashtag. Yes. But if you’re trying to trademark something like, I don’t know, cat lovers, okay. Let’s using that as an example, because as you know, cats are very popular on social media.

Binh:

You couldn’t trademark #catlovers, unless you were using that hashtag to maybe open a restaurant or something, you know it’s got nothing to do with selling cats, or selling food related to cats or anything that’s related to cats. So yeah, hashtags takes can be trademarked, but you’ve got to look at the, why are you wanting to trademark it? And if it’s to stop others from using it while you’re defeating the whole purpose of yes. A trademark represents. Yeah.

Jane:

That’s such a good point. And I guess, as you said, the reason why people would do it is just to really stop the competitors from doing it for, from using that hashtag. But you certainly wouldn’t want to stop the general community from using it. It’s counter-intuitive, which I think stay a really good point. So if small businesses are kind of thinking about the benefits of trademarking, it’s a huge, like one of the biggest benefits is protecting your brand, protecting the stuff. And even though the product and the service, I think that’s a really good example as well when you’re developing specific products. But what are some of the other advantages for about, about trademarking, some of your intellectual property, whether that be iconography or a tagline or business name other than just protect, protecting it from, from your competitors? What are some of the other benefits that you might get from trademarking?

Binh:

Well, when you trademark yeah, if you’re successful enough to earn a registered trademark, you can actually on-sell that trademark in the future. If you sell your business, you can license out, let’s say a product name. For example Pierre Cardin I believe is one of the most licensed name in the marketplace, so Pierre Cardin do not necessarily produce the wallet. The key rings, the clothes, the towels that they lend their name to, they own the trademark. And what they do is they license that brand out to other manufacturers to produce it. And what they do is they earn royalties from that brand without actually having to outlay the cost in producing the products. So if you’re, if the small business owner is lucky enough to create a brand that’s recognized in the marketplace, but they don’t actually produce the products, they can always license that name and earn revenue from that.

Binh:

Secondly, with trademark protection sometimes it’s actually not about protecting both enforcing the brand from others, from using it. I’ve had cases where business owners trademark it to ensure that no one else can ask them not to use it. So one of the aspects of keeping a brand unique is that once you get a trademark, you actually have to police your own brand and you need to enforce that brand by taking someone to court or ask them not to use it. And if you really want to keep the uniqueness of that brand, then you must enforce that brand for I’ve got customers that don’t necessarily care that other people are using their brand name. They just don’t want them to use it. So they protect it. They’ve registered trademark to protect themselves from the hassle of others from asking them to use it. So those are the, I guess, other aspects of what someone would want to register trademark. Yeah,

Jane:

That’s really good point. And I had no idea, I guess I hadn’t really thought about it, but I love your insight there about Pierre Cardin and about, I guess, being able to license a brand name and that’s certainly not for everybody. In fact, it’s probably not for a lot of people. I can imagine that there’s a little bit of nightmare involved with that in making sure that the person that you licensed that brand to doesn’t harm the brand that, that you’ve created. And Pierre Cardin would have spent, you know, a lot of time and money building that brand. The last thing you’d want to do is hand, you know, one of the major touch points of that brand or your product over to someone who’s going to destroy any kind of brand legacy that you’ve built. So  that’s really interesting, but yeah, good point about protecting it so that people can’t stop you using it.

Binh:

Cause yeah, look, I guess I’d never really thought of it that way, but that’s a really good point. In fact, that’s kind of one of the biggest reasons to do it. I, I would imagine. And you said that a trademark lasts for 10 years. Yes. Now, even like with Asic and your business name registration, or your domain name registration, where you kind of get an email, you know, a month or so out before it’s due to be reregistered and you’re prompted to reregister it. Cause like I could imagine like something like Coca Cola where someone really stands to be able to extort that, you know, if they, if they let that lapse accidentally and someone, you know, just happened to be following when their trademark renewables was up and, you know, in the 24 hours that they lapsed their membership got in there and trademark, but like what’s, what’s the process around making sure that, that your re-registering and renewing that, that trademark every 10 years.

Binh:

Well, the onus is on the owner to mark that date, even though it is a 10 year period. However the trademark office are pretty good. They tend to advise you about a year out before your trademark is to be renewed. And even if you lapsed, let’s say 24 hours after the date, you are able to re revive it. I think up to potentially six months of the expiry date to, you know, to renew it after that, well, then you’ve lost it. So there are sort of safeguards there to ensure that the owners of the trademark have plenty of notice and plenty of reminders to renew their brand and the large companies have got departments of lawyers that you know, make sure that their brands do not lapse. And you’re pretty sure someone’s job going to be on that.

Jane:

Especially when they’ve got departments of people to do that. Of course, in small business, we don’t generally have departments of people doting on us and making sure that we renew that. So that’s comforting to hear that there is some sort of a reminder process because, you know, I think without reminders coming through to me, it would just definitely not be on my radar, especially with 10 years between drinks. Now, what about that little TM mark that denotes that you have a trademark on, say a business name? Do you like, what’s the deal with that? Do you have to use that? Do you have to use that across all touch points? Like why do, why do people put that TM on there? And yeah, what’s, what’s the ruling around that?

Binh:

Well, interestingly, everyone thinks that by putting TM that you’ve got some registered rights, unfortunately, TM actually only indicates that you are wanting to use that brand as a trademark. The actual definition for TM is that that brand is unregistered.

Jane:

Is that right? I thought the TM was when you had the trademark and it was no.

Bihn:

And search on the you know, I guess on Google and you look up what TM symbol represents. Also the trademark legislation in each country, it actually says TM symbol represents the that a brand is unregistered. The brand owner are indicating to consumers that they are in intending to use it as a brand, as a symbol, which is the official registered trademark symbol. A symbol represents that the brand is registered and has the enforceable legal rights to pursue infringes. So the symbol is what indicates something is protected. I can understand why you and your listeners would get confused about TM being the symbol for registration. And the reason why you sometimes put TM on, let’s say established brands in the supermarket or retail shop or even online. It’s because it’s multinational especially multinational food brands they have to manage the production of packaging.

Binh:

So imagine, let’s say you producing a yogurt to be a brand of yogurt that’s to be shipped around. Okay. let’s say your next layer, something like that. The brand manager would, first of all, have to find a name that’s trademarkable in all countries that they would like to promote and sell the brand. Okay. So that’s number one, number two, they’ve got to trademark it and because trademarking takes eight months in Australia, but it could take up to, I know a year to 18 months in other countries. Okay. So if you can imagine the poor marketing manager and those companies have to manage the launch of these products, and it’s actually illegal for you to put an R symbol on packaging and sell it in a country that you’re not registered for trademarking, you actually get fined. I think in Australia, it’s like $6,000 if your caught using the R symbol.

Jane:

Wow. So which is probably nothing to a large company, but, you know, the fact is that you’re breaking the law. If you put the, R symbol with that trademark registration. So technically they’ve got to put in a TM when you’re, let’s say launching the product, just so that they don’t run foul of the law in a particular country, that they haven’t actually obtained which station. And so maybe the first batch of packaging that they produced for that you’re good. Might have TM on it, but gradually over on a no to two year period, they’ll then slowly you know phase it out, then introduce the app. But then in some countries like India, or, you know, third world countries where maybe production there, it’s either forgotten or someone’s there logistically it’s really difficult to, I guess, make sure that every country has an R on the packaging. If once a trademark is registered in that country. So that’s why you see TM sometimes on ladies, because when they first launched the product, it’s probably because it wasn’t trademarked around the world. So therefore it was probably best to be on the safe side, put TM on it to indicate that it is an under unregistered trademark, but they are intending to obtain trademark registration in the future because they want to use it as a brand.

Jane:

So that is so, yes, that is so interesting. And in fact, yeah, I didn’t realize the difference between that. So you’ve got the R symbol, which means it’s definitely registered as a trademark, the TM, which means it’s, we’re intending to do it. And then how does the see the copyrighting symbol fit in to that? Because it’s copywriting like a completely different law all together?

Binh:

Oh, yes. Copyright is a totally different law, right? Copyright is more about the protection of I guess the creation of content creation of logos anything that’s creative and in Australia, copyright is automatic to the person that creates that piece of work, whether it’s in, you know, whether it’s enrichened form in a painting in music. But in other countries you have to register it. So that, yeah, copyright is a completely different law that that governs well, it sits within the intellectual property domain, but it is a totally different law.

Binh:

So interesting. My goodness. I feel like I’m learning so much here. This is really interesting. Okay. So then you were talking about you explained the process that obviously things have to be trademarked in all the individual countries. So just because you get a trademark registered in Australia does not mean that you have the license to use that throughout the world, which is also good to know, to know. And as you said, like it takes eight months to actually get the trademark passed in Australia. So it could take, you know, years and depending on the, I guess, the organization of different establishments throughout the world. And as you said in third world countries that might take a lot longer and still not even mean much depending on, depending on how that’s governed. So for small business, is there, you know, particularly, I guess if it depends on where they’re kind of focused, but if they are focused, if they do have international kind of aspirations, when would you say it’s necessary for a small business to, to get a trademark? Like, is it really something that’s that’s I guess, necessary if you’re not looking to expand or, is there a certain point in time in the business where a trademark should be something that you really think about? Is there any business that shouldn’t get, you know, bother with a trademark?

Binh:

Well, I think over the years, this question comes up quite a bit. And really what I, what I have found is that you actually have to take a step back and look at the motivation of why you’re wanting to trademark before you even think about whether you want, you need registration or not. Because unlike domain names, you actually have to use a trademark or else it could get revoked. So if you’re, let’s say a company that’s just starting out and you’re not particularly ready to launch your product in the United States, but you have intentions. Well, maybe look at when you’re going to go there because you want to apply closer to when you’re ready to launch, because in America they’re very strict. They actually ask you every three to five years to indicate that you’re actually using that brand in that marketplace.

Binh:

And if they don’t, they actually won’t renew, even though it’s a 10 year registration, let’s say in America, they check in with you every so often to make sure that you’re actually using the brand. And if you’re not, it could get revoked from the registration. Whereas in Australia, the onus is really on the person who owns the trademark. And the only time that  something can get revoked is if a third party wants to really desperately use that brand. They can then revoke your trademark if you haven’t been using it continuously for three years. So really the business owner has to step back and think about the motivation for their business, whether the brand that they’re looking to launch what their plans are for  that business, are they looking to franchise it in the future?

Jane:

If it is, then they should get a trademark because you know, when you want a franchise, the trademark is one, the essential I guess, legal protection that you need to create a franchise. If you are wanting to ensure that the brand that you create, no one else can use it. And you’re adamant that your business is going to be successful, then you should trademark at the very start. And you know, bite the bullet and get the trademark because in in many parts of the country, it’s the first to use. And first to fall, that’s important. And that is the best trademark protection. You can have many business owners. I know, especially in the trades area, we’ve had many cases because of the internet where they started, let’s say 12 years ago, they were the first person to use that brand, let’s say, but because they didn’t know about trademarking, they’ve seen competitors pop up with similar names and they don’t like it.

Binh:

They didn’t understand how they could stop them, but let’s say, would that trades person, if they actually started that brand name trademark at the beginning, and then they saw all these similar names pop up on the internet. When people searching for let’s say electricians or plumbers, they actually own the trademark. They could have stopped all those competitors from popping up. So if you’re a business owner that is afraid that there are going to be new people starting up businesses, trying to take advantage of your existing reputation in the marketplace and you do need a trademark and the ones that don’t need trademarks the business owners that do not mind, if someone tomorrow came up to them and said oh, well, handed them a cease and desist letter. And they’re more than happy to change their name instead of being sued, then that fears your answer, that they don’t value the brand enough. And that they’re willing to change their brand. Tomorrow. It just shows you that it will tell you that without motivation, they don’t need to trademark because they’re willing to risk their brand.

Jane:

Yes. And as a marketer, I would say this, that’s not a good place to be. And you definitely don’t want to go to the effort of building a brand and getting people to recognize your business name and brand name, to only have that ripped out from you. You always want to be in control of your brand. So I think that’s a really good point. Okay. How much protection does a trademark give you? I guess my mind jumps to, you’re a small business you’ve trademarked. Okay. and then say like a really big business that can afford some serious lawyers wants to come on, you know, to just start using your brand name, for example. And I know a lot of big businesses wouldn’t do this, obviously because they’ve got the lawyers to advise them not to, but how, you know, if you have to go and pursue them, is this a nightmare to do like for small business, if someone does start ignoring your trademark, what’s the process that you have to go through to, to kind of make sure that they stopped doing it?

Binh:

Well, the tripod protection gives you a monopoly for that brand name that you’ve registered for. However, to maintain your trademark rights, you have to enforce it. Unfortunately, you cannot allow someone to completely ignore your cease and desist letter. You must take them to court. And that is the reality of enforcement. And that’s what I said earlier, that if you’re not willing to enforce your trademark, you must have not even bothered you trademark it, but at the same time, you can’t cry that someone else is using your registered brand or your, or your brand. So with trademark registration, the reality is that you have to enforce it if you want to keep the uniqueness of your brand. And of course you will try to mediate with them prior to going straight to a court case, let’s say. But in most cases, a reasonable person would comply with the cease and desist notice as if you win in the courts, they are liable for your court costs in their own court costs.

Binh:

So you would hope that common sense would prevail in those scenarios. A case I can highlight here is when burger king wanted to come to Australia many, many moons ago, they couldn’t get they couldn’t enter the Australian market as Burger King, even though Burger King is a franchise overseas. So the master franchise in Australia could not use Burger King in Australia because someone had owned Burger King as a trademark here. So therefore they actually took the decision, even though they a big company to rebrand or to massage the brand into Hungry Jacks. So that shows you that a trademark does have powerful protection and ultimately the trademark owner has the legal rights to that brand. A big, I mean, ultimately yes, you’re right. The deeper your pockets are the lawyers pursue it. And yeah, so unfortunately, sometimes that is the case that the big corporations do use their muscle, their legal muscle power, and the deep pockets to run you dry so that you would either give up your trademark or, I mean, ultimately you can also sell that trademark to them as well.

Binh:

So the other thing a trademark is, it’s an asset that can be solved.

Jane:

Yep. And it sounds like from what you’re saying, it does offer that legal protection. So they would have to have a really good case to be able to get away with it. So if you did take them to court, you know, if it did get that far, you’d probably would win you know, unless there was extenuating circumstances. Yeah.

Binh:

Can I just make a point here as well? Not all trademark registrations are equal in protection. So if your brand is unique, you have the most, you know, the most the monopoly over that brand. However, if your trademark name is descriptive, then it’s a very weak trademark protection. Okay. So that’s a point that I need to make, because I find that a lot of business owners over time, you can get it, you can overcome issues of descriptiveness within trademark registration by being there for a period of time. But just because you’re obtaining the trademark doesn’t mean that trademark is as good as someone let’s say apple. So apple is a great example because who would have called a computer after a fruit, you know, so that distinctiveness of the brand for computers is much stronger than let’s say, if someone had named their computer company, Best Computers or something interesting, or Computers Australia, or you know, anything that’s descriptive of their brand, you have weaker rights, or weaker protection interesting, really important.

Binh:

Going back to your question about where the business, like I know business owners, when they started their own you know, they’re running their business normally, or they’re just starting out. They don’t have a lot of cashflow. So if you don’t have the money now to trademark what I suggest the business owners do before they even register a company name with the asset or get a domain name, it’s actually take a step back and really spend time researching the name for their business to save it. And I’ve got my three top tips for them to do to implement right prior to actually looking at your brand, because this will save, this will ensure that they are first to use in the marketplace and that they potentially will not be sued by another party when they launched this plan, because if you’re first to use it and you’ve spent the time making sure it’s unique, that means no one else in the marketplace is using that brand now.

Binh:

So you’re pretty safe. Okay. So when thinking of a new brand these are my top three tips do not use descriptive words or names in the brand name. Okay. So if you’re a real estate agent you know, try to avoid you know, mid century or modern or mode, if a term is descriptive within your industry then it’s really, you know, other traders should be able to use those. So it’s best that you avoid descriptive words in your brand name.

Jane:

. I remember when I was talking to you about the, How To Do Marketing product name, you said, because that is quite descriptive. It’s very hard to trademark. Okay. So that’s, that’s interesting. Yeah.

Binh:

I’ve actually got a good one. In terms of real estate, you know, there’s a trademark on a system called Melbourne Buyers Agent I think that’s been registered. Right. So that’s what I call a weak trademark because other buyer’s agents in Melbourne need to be able to say that they’re based in Melbourne and they’re a buyer’s agent. So what really, that trademark registration is there for is to ensure that no one can ask them not to use it. Protecting and being unique. Good luck to them. They’ll have to sue everyone that’s in that brand. So that’s so yeah, so to avoid weak trademark or a weak brand, don’t use descriptive names in your brand, even though your SEO person will ask you to do that because it helps you with Google rankings but it actually flows as the grain for trademarking.

Binh:

Okay. Number two, do not use geographical locations in your brand name. Okay. So there’s a huge debate at the moment about geographical indicators where the products are made. So in the past, maybe trademark having a location with your attached to your product might have been the trend, but these days you find it very difficult to actually obtain a trademark for that so like Bega Cheese, you know, it’s located in Bega and it makes cheese. So but that brand over the years have created a strong brand of that. But if you’re a small business owner, you’re not going to have the same marketing budget to promote a geographical descriptive brand. So it’s actually best to avoid it as well, because if you can imagine everyone wants to be able to say that they’re Melbourne bakery.

Binh:

Or Sydney electrician. So avoid geographic names in you brand names as much as possible. The third thing is actually spent time to conduct research on Google, on the trademark databases. Even if you wanted to check company names, to see how many other people using the company name, even though the company name has got nothing to do with branding, but it just gives you an indication of what other people have been thinking in the past, you know, of names. I would go as far as to even check domain names, because if you know that let’s say the.com or .com.au, you, which are the more desirable addresses for domains if they are taken, then you sort of know that name is either popular or been used. And if let’s say the.com or .com.au domain names have been taken, you go and visit those sites for that brand name that you’ve come up with to see whether they are often the same products or services within your same industry.

Binh:

Okay. So the idea of spending time at the beginning to do this research to ensure no one else is using that brand name is important because you don’t necessarily, well, I never could understand the logic. Anyway, if I did find someone let’s say I came up with the brand name and I found somebody else using it, well, why would I follow them? Because how is the consumer supposed to know whether it’s them or me, you know? So I would actually completely be turned off by the idea that I found someone doing exactly the same thing as me with a similar name. What I tend to do there would be just move on and business owners have to also be brave. Because at the beginning they had nothing to lose. Okay. So at the beginning they might pay to the name or concept in your head.

Binh:

And I find that they really get attached to that. What, you know, the name that they come to me with and I say to them, but you haven’t even started the business. And why don’t you look at this unusual name or unique name, be brave because every single brand that may be famous today, whether it’s Apple or Coca-Cola or Pepsi, I think Pepsi was a made up name and Nike was a made up name, be brave because they were, they all started out small, and just over time they built the brand behind it. And so each small business owners should think of that, they might be well-known brands now, but every brand starts in the same spot.

Binh:

It’s due to marketing the services that, you know, marketing agencies like yourself offer to help them build that brand and build that reputation behind that brand is what makes the brand. So after a while, people will know, well, Nike equates to shoes, Apple equates to computers yet it’s the same thing with any new brand. Some are weird because it’s sort of not within your industry. I mean, what would you have liked to have been a fly on the wall when Steve jobs said, I’m going to call the computer, my computer company, Apple, you know, it’s like, it’s it defies logic, you know why computer and apples. So the business owners really, if they can’t afford to trademark now, so you don’t need to market very start. I mean, ideally you should, but don’t have it then spend the time to find that name that is unique in your market.

Jane:

A hundred percent. I think that’s really, really good advice and you’re absolutely right. You can build a brand around any name, so don’t feel like it has to be that really obvious solution. So if you’ve got your mind fixed on something and I guess you’re saying be brave, but also be creative, you know, think about how you can actually express yourself in, in different ways now. You actually helped small business owners trademark their brand. Can you share a little bit about what Baxter IP does and how they might be able to help a small business owner to trademark their brand or something within their business?

Binh:

Well, a Baxter IP where we are patent and trademark attorneys. So the patent protection is to do with the protection of inventions. So if small businesses have created you know, an invent, if they’ve invented something and they want to protect that invention, they would apply for a patent. And we’ve got patent attorneys within the firm to assist with that. And with myself, I’m a trademark attorney. So I help businesses protect their brand and the unique service that I am able to offer, because I’ve got an actually a marketing background prior to becoming a trademark attorney, if a client comes to myself. And let’s say, I find that the brand that they’ve come up with is not trademarkable due to another registered trademark, the trademark database. I actually help them search or guide them to a new name. And I have a brainstorming process that I lead them through.

Binh:

I tend to say to them, okay, well, this is not available, but why don’t you come back to me with 10 other words or names that you like, and then between you and I, we will find something that’s trademarkable in that the client likes. And the reason I take the time to do that is to make sure that they start the brand on a solid foundation, but they’re not going to be potentially sued by other parties in the future. And also to secure, I guess, the, you know, some of the more desireable domain names, because if your brand is as unique thing, it’s probably unlikely someone’s taking your domain name. So using our IX, my expertise with branding and combining it with trademark law I’m able to make those judgments. And of course nothing’s ever guaranteed because ultimately it’s examiner that trademark, but, you know, my hit rate is pretty high. It’s about 95% of the moment since I’ve been doing this. And yeah, so I’ve done over the year 600 trademarks. So I, I know what I think about that, that’s a lot of losses that you’ve had.

 

Binh:

And I guess by going to the subject trademarks applications, I’ve learned what the rules are and the rules are always changing. So it’s very I guess that I remember how to apply the various rules to get the best outcome to the small business. I’d say in the last two months, I’ve spent a lot of time helping business owners finding a name because the name that they’ve come to me with a lot of are not trademarkable in your original statements.

Jane:

Interesting Binh, I have learned so much from talking to you in this in this episode of the How To Do Marketing Show, thank you so much for sharing all of that insight. If our listeners actually want to reach out and connect with you personally, where’s the best way to, where can they find you?

Binh:

Well, they can email me directly. My email address is [email protected] So it’s B I N H dot R E Y at baxterip.com.au they can look me up on LinkedIn or if they just go to Google and type in Binh Rey they’ll be able to find me there because I think I’m the only been right on Google at the time.

Jane:

Ah, that is so handy. That’s awesome. Talk about unique. That’s excellent. Oh, look, thank you so much for that. I honestly have learned so much. There’s so many technicalities that yeah, I just hadn’t really got my head around. So for me it definitely sounds like something that’s really, really important for small businesses to do, to protect their brand. Particularly as a marketing consultant, you know, there’s a lot of investment and blood, sweat, and tears and creativity and personality that goes into your brand. You certainly don’t want to be in a situation where someone rips that out from under your feet. So I really appreciate you taking the time to share that been. And yes, well hopefully you’ll get some people coming and getting some advice from you around this. Cause I think it’s a really important thing to do.

Binh:

Well, I’ll welcome any one who contacts me. I’m more than happy to give some initial bias.

Jane:

Excellent. Thanks so much Binh