How to choose a trademark that you can actually register
The strongest trademarks often have nothing to do with your goods or services (e.g., APPLE, NIKE, TIM TAM).
The weakest trademarks describe exactly what you do (e.g., YUMMY SANDWICHES).
Everything in between is a trade-off between how easily customers understand you and how strongly you can protect the name.
If you take only one thing from this page, it should be this:
The more your name explains your business, the harder it is to protect.
Talk to me before you commit. Choosing the name is the first stage of registering a trademark in Australia, and it's often when the most consequential decisions get made.
"Warren is an absolute gun, we worked on four trademarks and all have been accepted. We had challenge with one of them that required a lot of extra work but Warren got it over the line. We will be using Warren for all future IP work without question."
- Marcus Hando
Written by Warren Wong
Registered Australian and New Zealand Patent Attorney and Trade Marks Attorney.
The distinctiveness spectrum
| Type | Registrability |
|---|---|
| A coined word with no meaning (NIKE) | Strongest. Register easily, enforce easily |
| A real word unrelated to what you sell (APPLE) | Very strong |
| Provides a hint without describing it (Netflix) | Usually registrable |
| States what you sell or a feature of it (Toys "R" Us) | Difficult. Needs evidence of use. |
| The ordinary name for the thing itself (American Airlines) | Very difficult. Need to build a massive reputation. |
Most trademarks sit somewhere on the above scale. Where it sits determines both whether you can register it and how much protection you get.
New businesses often pick descriptive names, because a descriptive name does free marketing. It tells a customer what you do before you've said a word. That instinct is commercially sensible and legally expensive.
However, trademark law's reasoning is straightforward: other traders need ordinary words to describe their own products and services. Under section 41 of the Trade Marks Act 1995, a mark that isn't capable of distinguishing your goods and services from other traders' can't be registered. Descriptive words fail that test because competitors have a legitimate need to use them. It would be pretty unfair if you were the only juice business that could use FRESHLY SQUEEZED.
Descriptive trademarks are almost guaranteed to face objections and we’ll likely need to submit evidence of substantial trademark use in the course of trade. → Responding to trademark objections
What tends to fail
Geographic names. "Sydney", "Yarra Valley", "Aussie". Other traders in those places need those words.
Ordinary descriptive words. "Quick", "Fresh", "Premium", "Eco". Laudatory and descriptive words are available to everyone.
Your industry's vocabulary. If a competitor would reasonably use the word in their own advertising, expect an objection.
Surnames, particularly common ones, can face difficulty depending on how common they are.
Names close to existing marks. Under section 44, your mark can be refused if it's substantially identical or deceptively similar to an earlier mark for similar goods or services. "Deceptively similar" is broader than it sounds, and covers sound and idea as well as appearance. E.g., "Kwik Fit" and "Quick Fitt" would be considered deceptively similar for the same or similar goods/services.
What tends to work
Invented words. Often nothing beats them. Less likely to have conflicts and descriptiveness objection, and total control over meaning.
Ordinary words used out of context. A word with no connection to your product. APPLE for computers, not for apples.
Suggestive combinations. Hinting at a benefit without describing it. This is where most good brand names land, because they're memorable and registrable.
Distinctive spelling, used carefully. Changing the spelling of a descriptive word usually doesn't rescue it. Examiners assess how a mark sounds and what idea it conveys, not just how it's written. E.g., "Kwality" is still "quality".
A logo, if the word is weak. If you're committed to a descriptive name, a logo incorporating it may be registrable where the words alone are not. However, understand what that what you get is protection for the logo, not the word.
Searching the register before you commit
The trademarks register is the obvious first place to look, and it's free.
Australian Trade Mark Search is IP Australia's official database. It shows everything registered or pending in Australia, and it's where any serious look at a name starts. Search the exact name, then search variations: different spellings, the same words in a different order, and names that sound the same even if they're spelt differently. IP Australia will catch marks that are deceptively similar, and similarity of sound counts.
TM Checker is IP Australia's newer tool. It gives a quick indication of whether a name looks likely to run into problems, which is useful for narrowing a shortlist of candidates before you look at any of them properly.
Search by class as well as by name. A mark that's identical to yours in an unrelated class may not be a problem at all; a similar mark in your own class usually is. → Trademark applications
The register isn't the whole picture
A clean search result doesn't necessarily mean a name is safe.
Unregistered rights. Someone trading under a name without ever registering it can still have rights built up through use, and those rights can beat yours. Nothing on the register will tell you they exist.
Recently filed applications. There's a lag before a new application appears on the register, so a clean search today doesn't rule out someone having filed last week.
Convention applications claiming an overseas priority date. Someone who has already filed a mark overseas gets six months to file in Australia and claim that earlier overseas date as their priority date. So an Australian application filed nearly six months after yours can still rank ahead of it. When you search, nothing about it exists on the Australian register, and it may not appear there for another six months.
ASIC. Business names and company names sit on an entirely separate register that doesn't talk to the trademarks register. Worth checking both.
The examiner's judgement. Whether two marks are deceptively similar is an assessment, not a calculation. Two people looking at the same pair of marks can reach different conclusions, and the one that counts is the examiner's.
Overseas registers, if you have any intention of selling into other markets. A name that's clear in Australia may be taken in the US or the EU, and finding that out after you've built the brand is expensive. → International trademark applications
So treat a clean search as a good sign rather than a green light. Between the processing lag and the six-month convention window, there can be months of filings you simply can't see. A clean result tells you there's no obvious obstacle, which is genuinely useful and isn't the same as certainty.
Run it past me before you commit
Before filing, I check your proposed mark against the register, TM Checker and the usual online and commercial databases, and tell you what I find and what it means for the name. That's part of helping you choose and file rather than a separate exercise.
It's also the conversation I'd much rather have before you've bought the domain and printed the packaging. At that point changing your mind costs you nothing. Six months into trading it costs you a rebrand.
If you've already done your own searching and want a second opinion on what you've turned up, send it through.
A practical order of operations
Generate several candidate names, deliberately including some that mean nothing
Rule out anything purely descriptive of what you sell
Check the obvious: the Australian trademarks register, ASIC, social media handles, Google
Check with me while changing your mind is still free
File, then launch.
Frequently asked questions
Can I register a descriptive business name as a trademark?
It's difficult. Under section 41 of the Trade Marks Act 1995, a mark that can't distinguish your goods and services from other traders will run into objections during examination. Descriptive names can sometimes be registered with evidence of substantial use over time, but that's a longer, costlier route than choosing a distinctive name at the outset.
Will changing the spelling make a descriptive name registrable?
Usually not. Examiners consider how a mark sounds and what idea it conveys, not just its spelling. A misspelt descriptive word is often treated as the descriptive word.
Can I register a trademark that's similar to an existing one?
Not if it's substantially identical or deceptively similar to an earlier mark for similar goods or services. Deceptive similarity covers sound and impression as well as appearance, so marks that look different on paper can still conflict.
Is my company name automatically a trademark?
No. Company and business name registrations are administrative registrations with ASIC. They give you no right to stop anyone else using the name, and ASIC doesn't check the trademarks register before granting them.
Should I register a word or a logo?
A word mark, if you had to pick. It protects the name however it's styled, which is broader and more useful. Register the logo as well if the design itself carries brand value, or instead of the words if the words are too descriptive to register alone.
Can someone register my trademark after I've already filed?
It is possible. For example, if they filed the same or a similar mark overseas before your Australian filing date, they have six months to file in Australia and claim that earlier overseas date as their priority date. Their application can be filed after yours and still rank ahead of it. (This is a reciprocal rule and you have the same six-month window to file overseas). → International trademark applications
Does a clean trademark search mean my name is safe to use?
It means there's no obvious obstacle, which is not the same thing. The register won't show you unregistered marks that have built up rights through use, or overseas applications that could still be brought into Australia with an earlier priority date. It also can't tell you how an examiner will assess deceptive similarity.
How many classes do I need?
As many to cover what you actually do, plus anything you can realistically see yourself doing. Each class costs at filing and at every renewal for as long as you hold the registration, and unused classes can leave a registration vulnerable to being removed for non-use.
Before you commit to a name
Send me two or three candidates and a background of your business.
I'll tell you which have the best prospects and whether anything obvious stands in the way. That conversation is free and it's the cheapest point in the whole process to change your mind.