Defining a new trademark
The trademark should be distinctive and not descriptive or allusive.
- As a general rule, words that are “merely descriptive”of your product (or service) are difficult to protect. The strongest trademarks typically have “no meaning” in relation to the goods (or services) for which they are used; for example, UMICORE® is a very distinctive trademark and is therefore easier to register and to protect against infringement by a third party.
The trademark should be a sign which is available.
- The trademark should not infringe any prior existing rights of a third party (ie it must not be already registered in identical or similar classes).
The trademark should not be prohibited.
- Some trademarks are forbidden by law. For instance, certain official emblems (such as National flags and the insignia of the Red Cross) cannot constitute valid trademarks.
The trademark should not be deceptive (i.e. confusing) and should not be misleading.
- A trademark such as VMZINC® cannot be registered for products which are not made of zinc.
When to create a new trademark?
Because of the costs involved, Umicore does not register a trademark for every new product or service. In many cases, products or services can be protected by a descriptive name that is associated with an existing trademark or brand.
In order to decide when a trademark is needed, the following criteria should be considered:
- Financial: In the business plan for the new product or service, are the projected turnover and margin sufficient to justify the investment in a trademark?x
- Market: Is the product or service in a market where a clear distinguishing factor is needed?
- Longevity: As a general rule, trademarks should only be used when we are certain that the product or service will be on the market for at least ten years.
- Customers: Does the customer base need a clear distinguishing factor?
- Business Impact: Is the new product or service likely to have visible long-term impact on the rest of our business?
How to create a new trademark?
Once the need for a trademark is established, the next step is to create it. By definition the new trademark must be something that is not already registered and must be unique and distinctive. In addition, the trademark should not be offensive in any language or culture in which it is used and should be easy to memorize and pronounce.
A few simple additional tips:
- It is rarely a good idea to try to register any code name that was evolved during product development (such names target an internal audience).
- It is never a good idea to base a trademark on word play in one given language (as it will fall flat in any other language).
- Creation of the trademark should be dissociated from any ideas for the future communication plan that will be associated with it. The communication or advertising plan can only be developed once the trademark has been established.
Because of all these complex parameters, the normal process to develop a trademark is
- organize a creativity session to evolve a longlist of possible trademarks.
- check each of the remaining trademarks for possible ambiguity or offensiveness in the set of identified languages for the markets where it will be used.
- check each of the trademarks on the longlist for possible previous registrations.
- select the best remaining trademark from the resulting short list.
Creativity sessions can be organized internally using structured creativity tools or can be facilitated by specialist brand creation agencies. Ideally such sessions will use a group of 6 to 10 persons involved with the product or service and be structured according to concepts associated with it. Free-range thinking (or “brainstorming”) is rarely successful. Before organizing such a session, the list of applications is needed, together with the list of countries where the trademark will be used.
Once the trademark has been defined though this process, it can be submitted to the Legal Department for registration. Registration can take 1-2 years but once the request is officially made we can use the trademark as though it were registered (unless there is an opposition to the registration).