Choosing a Strong Trademark: A Practical Guide - Ep 10

Choosing a business name is exciting. Choosing a protectable business name? That’s strategic. In this episode of Elise Explains IP, we break down what actually makes a trade mark strong — and why most trade mark issues start at the naming stage, not at registration. If you're launching a new business, rebranding, or advising clients on brand strategy, this episode walks through the practical legal considerations that can save time, money, and stress down the track. What We Cover 1. Not All Trade Marks Are Equal Trade marks sit on a spectrum — from highly distinctive (and easy to protect) to generic (and impossible to register). The strength of your trade mark affects: How easy it is to register How broad your protection will be How enforceable it is The long-term value of your brand 2. The Trade Mark Strength Spectrum We walk through the hierarchy of trade marks, from strongest to weakest: Fanciful / Invented Marks Completely made-up words (e.g. Kodak, Xerox). ✔ Strongest protection ✔ Easier registration ✖ Require marketing investment to build meaning Arbitrary Marks Real words used in an unrelated context (e.g. Apple for computers). ✔ Highly distinctive ✔ Excellent legal position Suggestive Marks Hint at what you do without directly describing it (e.g. Netflix). ✔ Registrable ✖ Sometimes face closer examination Descriptive Marks Directly describe goods or services (e.g. “Fast Tax Returns”). ✖ Difficult to register ✖ Narrow protection Generic Terms The name of the product or service itself (e.g. “Coffee Shop”). ✖ No protection available Common Mistakes We See Choosing a name that “sounds safe” but is legally weak Falling in love with a brand before conducting searches Designing logos and buying domains before checking availability Assuming registration automatically guarantees broad protection Practical Checklist: Choosing a Strong Trade Mark When naming your business, aim to: Choose invented, arbitrary, or suggestive names Avoid directly describing your goods or services Be cautious with geographic terms Think about future expansion Conduct clearance searches early Get advice before committing to brand rollout Key Takeaway If your name immediately tells people exactly what you do, it may be great for marketing — but weak for trade mark protection. Distinctiveness drives registrability. The strongest trade marks often feel slightly abstract at first — but that’s precisely what gives them power. Who This Episode Is For Start-ups choosing a business name Established businesses considering a rebrand Accountants, lawyers, and advisors guiding clients Marketing professionals collaborating with legal teams