Choosing a Strong Trade Mark: 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