Professional brand development.

Trademarks indicate to the public that goods and services originate from your company – and not from your competitors. With brands you lead customers to your company. In addition, brands convey values. Brands enable consumers to repeat good product experiences and avoid bad ones.

We support you in creating the right brand for your product or service.

In the tension between the concern of creatives and advertisers to establish self-explanatory names such as “PlayStation” or “WALKMAN” as brands, we focus on the suitability of the brand to fulfil its essential function: to point out the origin of your company.

So that your brand is distinctive and “strong” right from the start – and stands out clearly from the competition. Our main experience is brand development form a lawyer’s perspective.

Brand development from a lawyer’s perspective – The most important dos and don’ts

The main function of brand development and thus of the resulting trademark is to indicate to the public the origin of goods and services.

Ideally, a trademark is an unmistakable indication of origin and transports values and goodwill to the consumer.

A trademark communicates to the public that a product or service designated with same comes from your company – and not from your competitor.

However, only a “strong” trademark can fulfil this task.

Set the course at an early stage and let us give you expert branding advice already at the stage of the genesis of your trademark.

Content

1. Which types of trademarks are available to you when developing a new brand name?
2. Why is choosing the right trademark essential for brand development?
3. Can I register a trademark myself?
4. What should be considered when applying for word marks?
5. What is the art of drafting the list of goods and services for a trademark application?

1. Which types of trademarks are available to you when developing a new brand name?

The possibilities of brand development are as diverse and colorful as you and your creative team. Almost any form of source designation – whether traditional or modern – can be cast in the form of a trademark registration.

Most of the world’s trademark offices, including the German PTO in Munich and the European Union Intellectual Property Office in Spain (EUIPO), allow the registration of a wide variety of different trademark forms. These include:

• Word marks, that protect a single word or a sequence of words, including slogans such as “Square. Practical. Good.” (Ritter-Sport), “I’M LOVING IT” (McDonald’s), “Vorsprung durch Technik” (Audi), “I’m not stupid after all!“ (Media-Saturn) or “Because simply simple is simple” (Telefónica Germany)..
• Word/-device marks, consisting of a combination of word elements, logos, colors or other pictorial arrangements that form the object of trademark protection.
• Figurative marks, i.e. two-dimensional designs such as logos, images and graphics without Latin word mark components, including letters, pictograms, symbols, images of objects or non-Latin characters such as Chinese characters. Figurative marks can be registered in color or black and white.
• Contourless color marks and color combinations. These are pure colors and color combinations that are detached from concrete pictorial representations and figurative boundaries and are made the object of a trademark. They are to be distinguished from other colored trademarks which are subject to the respective trademark form. The object of the abstract single color trademark is a singular color as such. Color combinations can also be protected as trademarks. This requires their definition in a clearly distinct form of appearance.
• Three-dimensional trademarks. These are three-dimensional shapes and designs of any kind, such as the spatial view of a product (e.g. a specifically shaped chocolate bar or a designer handbag) or the packaging of a product, e.g. the shape of a spirits or perfume bottle. 3D marks may be abstract from or coincide with the shape or packaging of the goods claimed. For the spatial representation of the object of protection, various views of the three-dimensional shape applied for can be filed with the PTO.
• Sound marks. These are marks made up of perceptible sounds, e.g. the jingles and signature tunes used by Deutsche Telekom or INTEL in radio and television advertisements. In addition to purely noisy sound images, sound marks that reproduce the spoken or sung word are also eligible for trademark protection.
• Position marks protect the affixing of a sign with operational information function at a constant position and in the same shape, size and graphic design. These include, for example, the well-known red LEVI’S® fabric „flag“ sewn onto the right back pocket of jeans pants or the red sole on ladies’ pumps by the famous shoe designer Christian Louboutin.
• Tracer thread marks are origin-identifying markings along the length of goods that are sold by units of length and are regularly cut off for this purpose. Tracer thread marks often run parallel to the length of the marked goods and often consist of colored selvedge areas, colored strips, glass rods or cables.
• Pattern marks. These include two-dimensional designs that are repeated over a large area in all directions. The piece depicted in the trademark application thus forms an exemplary part of a pattern that spreads uniformly in all directions. Design marks are represented by a two-dimensional graphic representation on paper or by filing in a JPEG file or on a data carrier.
• Smell marks are trademarks which consist only of a smell as such. In this case, the function of the smell is to distinguish goods or services of a certain undertaking from those of other undertakings. Smells are therefore generally registrable as trademarks.

Other forms of trademarks which do not correspond to any of the above-mentioned forms of trademarks may be registered as “other forms of trademarks”. In particular, mixed forms of the other trademark forms as well as those which can be perceived by means of the senses of hearing, touch or smell may be eligible for protection as a trademark.

2. Why is choosing the right trademark essential for brand development?

In earlier times, registered trademarks always had to be graphically representable. In the course of the German trademark law reform, the registration practice was, however, liberalized.

Since January 2019, the German PTO only requires that a sign deposited as a trademark must be unambiguous and clearly identifiable. This change in the law enables companies to subject even complex signs without graphic representability to trademark protection.

These can be sound marks, multimedia marks or hologram marks, among others. These new forms of trademarks can be protected as trademarks by filing them with the PTO in suitable electronic formats.

As an entrepreneur, you have a wide range of labeling techniques at your disposal that you can use for your corporate communications.

Correspondingly, you can make use of a variety of trademark forms to identify goods and services as “coming from your company”. The choice is not easy in view of the multitude of trademark forms.

You can rely on our many years of experience in choosing the right type of trademark for you. We will advise you competently as to which form of trademark is best suited to you and your corporate communications.

Make full use of the potential that exists for you with both “old” and “new” forms of trademarks and avoid gaps in protection!

We will be happy to advise you on the advantages and disadvantages of the various forms of trademarks as early as the brand development stage.

3. Can I register a trademark myself?

Representation before the PTOs is not reserved for attorneys and patent attorneys only. You can also act yourself.

However, practice shows that a large number of mistakes are often made by laymen when choosing the right trademark (and trademark form) in the course of brand development. Such mistakes can easily be avoided by consulting a specialized IP lawyer.

Even the wrong classification of the scope of protection of registered word marks compared to figurative marks or word/figurative marks can have unpleasant consequences in the event of later infringement.

The more word and figurative elements or other distinctive parts of a sign are included in a complex trademark, the more difficult the legal defense will be later.

This is because, in the context of trademark enforcement, the overall impression of the complex mark must be assumed and trademark law does not protect mere elements of trademark components.

Laymen like to combine the company name that is important to them or the most relevant designation for goods or services with a company logo, colors or other company insignia. This can then have harmful consequences for the entrepreneur despite the success of a corresponding trademark registration.

There is in fact a risk that the actual object of protection will fade away alongside other distinctive elements within the overall impression conveyed by the trademark. Instead of the intended strengthening, a weakening of the distinctive character of the trademark may be the consequence.

Before filing a trademark, legal advice should therefore ideally always be obtained from an IP lawyer having longstanding experience in the field of brand development.

4. What should be considered when applying for word marks?

Word marks are the true classic means of source-identification pertaining to goods or services in everyday business life and regularly provide the greatest possible protection. Conversely, if the wrong trademark word is chosen, the word trademark application may be doomed to failure right from the outset.

A word mark is not accepted for registration, for example, if it lacks the necessary distinctive character or if it must be kept free for free descriptive use in the interest of competition. The “strong” brand names which are inherently distinctive include typically are „coined” phantasy brands names such as AMAZON, TESLA, PERSIL, EON or ARAL.

Such marks do not allow any conclusions to be drawn about the nature, characteristics or quality of the goods or services they designate. They are therefore well suited for word mark applications.

By contrast, the brand names with apparent descriptive connotations produced by advertising agencies (e.g. WALKMAN® or PLAYSTAYTION®) are usually inherently weak and therefore less suitable for protection as word marks without a large advertising budget.

When selecting and developing the right word mark, you are also well advised not only to discuss your ideas and suggestions with your advisor from the advertising agency, but also to arrange for an examination by an IP lawyer specializing in trademark law and branding before filing a trademark application.

IP professionals working at greyhills have a different perspective than the typical advertiser from an advertising agency and will check for you whether the chosen brand name is suitable for registration as a word mark and possesses the necessary distinctive strength.

Our IP lawyers have many years of experience in the field of creating new brand names and have a wide range of knowledge. Let this accumulated knowledge work for you. Choose with us the right brand name that has a real chance of registration as a trademark and offers you reliable protection even in an infringement scenario.

5. What is the art of drafting the list of goods and services for a trademark application?

The selection of a suitable sign for brand development and the correct trademark application strategy also includes the correct drafting of the list of goods and services of the trademark with a view to subsequent infringement cases.

The pertinent IPOs do not grant unlimited trademark protection with regard to a specific designation, logo, etc. Rather, trademark protection is limited to very specific goods and services, which must be defined in a list in accordance with the applicable Nice Classification.

Here, too, mistakes are often made. For example, online traders fail to register the trademark of their own webshop for the services they actually use in the wholesale, retail or mail order business.

Instead, a trademark application is often filed that relates only to the goods themselves with which trade is conducted (albeit under the differently worded trademarks of third parties).

For such goods, however, the filing of a trademark application may not be necessary at all and represents a lost business expense. Negligence in this area may also lead to trademark protection being revoked for reason of non-use after the expiration of the five-year grace period.

Finally, it is possible that trademark protection for centrally important goods and services is inadvertently omitted. This can happen if the list of goods and services is insufficient or partly incomplete.

The correct classification of goods and services of a trademark during the trademark development process is an art in itself and should be put in the hands of an IP expert.

The attorneys of greyhills have many years of experience in this area as well and will be glad to assist you in drafting a suitable specification of goods and services pertaining to the trademark of your choice.

We will assist you in the development of the trademark suitable for your company and, with our expertise and in close cooperation with you, determine the scope of protection, the appropriate trademark form as well as the associated list of goods and services.

picture credit: Picture 1 Ben Allan | Unsplash; Picture 2 quimono; Picture 3 Gam Ol | Pixabay