10 top tips when choosing a new fashion brand name and obtaining trade mark protection

This article was orginally written for and featured in Fresh Business Thinking.

Your brand name is critical.

It identifies your product. It follows that choosing the brand name is important. As such care needs to be taken when choosing the name to ensure:

• that it is not similar to another brand already on the market; and
• that it is suitable for use or registration.

Research should be undertaken before proceeding with a new brand and at Fox Williams we have considerable experience in assisting brand owners at the crucial and exciting time of creating a new brand.

So what are our 10 top tips?

1. First choose a name which is inventive and easily remembered.  Names that describe the product or characteristics of the product are best avoided as although they would be easily recognisable by the public, they are difficult to protect as trade marks.
2. Conduct some initial internet searches to establish whether there is any obvious use of the same or similar name by any third parties.
3. Consider the territories in which your brand will be used and establish whether it has any bad connotations or meanings in those territories.
4. Will the name be used in conjunction with a logo? Consider whether it will always be used with a logo or only at specific times.
5. Will the mark be used on other goods apart from clothing, for example bags, jewellery or perfumes?
6. Instruct Fox Williams to conduct full trade mark searches of the relevant territories of interest to establish whether any third parties have already registered or are using the same or similar name.
7. If the searches are clear, in which countries of particular importance should protection be first sought?  Many companies start with a CTM (covering all member states of the European Union) and then follow up with further territories.
8. Spread out the filings by claiming priority from the earliest filed application. These applications then have the benefit that the rights are backdated to the date of the first filing. Any filings made after the 6 months of this first filing date are unable to claim the priority of this earlier filing date.
9. Register the relevant domain names.
10. Do not announce your new name until a trade mark has been filed.   There are many pirates in a variety of different countries that file trade marks to prevent people from registering their own brand and then attempt to sell the mark back to the brand owner.