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Three Essentials to Know About Trademarks

Three Essentials to Know About Trademarks

A start-up wonders why they’ve received a ‘cease and desist’ letter from Hugo Boss. Surely, they can't stop us using the word ‘boss’ they say?

Well yes they can. 

It may be an ordinary word but Hugo Boss used it first in the fashion business.

There are plenty of examples of brand names based around common words such as Shell, Virgin, Jaguar, Mars, and many more.

As long as a common word isn’t a generic term it can be owned. For example, the word ‘burger’ is generic for a hamburger business like Burger King. Nobody can claim monopoly rights over what are simply descriptive terms because the law protects the right of traders to use such terms in their sector.

So if you call your pizza business ‘Fresh Pizzas’, neither of these words are distinctive for the pizza category. Both are generic words. Competitors may want to describe their pizzas as fresh, and the law protects their right to do so.

By contrast if you called your umbrella business ‘Fresh Umbrellas’ you would own rights over the word 'Fresh' in the umbrella category. The word is distinctive in the context of umbrellas because umbrella sellers don’t need to describe their umbrellas as 'fresh'.

The second essential point to understand about trademarks is that the trademark system only allows a business to own ‘common’ words for specific business activities. 

So, a common word is simply owned for the specific area of activity covered by a business’ trademark.

There are 45 classes of goods and services, each with thousands of descriptions. Provided two businesses operate in different industries they're unlikely to be confused with one another. So, they may share a name.

That’s why Delta is a brand name for airlines, kitchenware, and appliances. Dove is a brand of personal care products, but it's also a brand of chocolate. And Polo is the brand name for confectionery and for cars and clothing. All these brands belong to different businesses.

They can co-exist because they're registered in different non overlapping areas of activity.

Indeed two brands may co-exist in the same class too. For example, AA is registered in class 39 for transportation services by American Airlines and the Automobile Association. They’re in entirely different industries so aren’t confused with one another.

As Hugo Boss owns the word BOSS in the fashion industry, anyone using the word BOSS in their fashion business name would infringe on Hugo Boss’ trademark rights.

And that leads to the third essential point to understand about trademarks: Household name brands have a greater scope of protection.

That means if you use 'Google' as your name for the supply of building materials, you would infringe on Google’s trademarks even though Google isn’t in the building materials business.

Understanding these 3 points about trademarks means you'll be less likely to make fundamental errors around names. 

Next week is the fourth anniversary of the Brand Tuned podcast so we will be relaunching it with a couple of new episodes about small business branding. Thereafter, episodes will drop monthly. 

If you have a story about your business branding that you would like to share, do get in touch.