Choosing branding elements for trade mark protection

If you have come up with a catchy and distinctive brand name for your product or service and/or put in place a logo and design packaging, you may be wondering which specific branding elements you can protect as a trade mark.

In this article, we discuss possible elements for registered trade mark protection. Depending on the size of your business and your trade mark budget, there may be a need to prioritise certain elements for filing.

As a recap, the best way to protect your brand name/logo is usually through trade mark registration, covering your goods and services, in your countries of interest. For the UK, as an example, trade mark applications can be filed with the UK Intellectual Property Office.

1. Brand name

An essential element to protect is your core brand name. This is likely to be used across your goods and/or services and will be the trade mark that consumers recognise and come across first. It may also be that your core brand name is also your house mark or family trade mark name, which will be the foundation for your portfolio. Filing a trade mark application for the plain words will give the widest level of protection.

2. Stylised brand name

If you are using a distinctive style of font for your brand name and this is consistently used across your goods and/or services and in your marketing and advertising, then you could consider a trade mark application covering the stylised words. Consumers may come to recognise this stylisation in association with your brand. This will help protect the particular stylisation of your brand name, against copycats and infringers who use a similar or even a different name in the exact same stylised font (particularly where they are also using other elements of your branding design such as colour scheme and general layout).

3. Logo

Logos are usually made up of words and/or images, and can be an important part of your branding and communication strategy. If your logo is particularly distinctive, it may even become the primary identifying element of your goods and services for consumers. If your brand name is included within the logo, you could consider protecting the combination of the words and logo image and also the image alone if this is distinctive enough for registration. This will help prevent and deter use of your logo image by copycats and infringers.

4. Sub-brand names

You may be using specific names for certain categories of your products or services under your core brand name – known as sub-brand names. If you have distinctive sub-brands that will be used for the foreseeable future, then you could consider filing trade mark applications for the plain words of these names.

5. Design/label image

If you are using distinctive images and have a specific colour scheme on a label or pack which will be applied across your range of products and/or services which is unlikely to change in the short term, then trade mark applications could be filed for the overall label and/or individual design images if they are distinctive enough to be registered (also design applications could be considered).

6. Design of packaging/product

If you wish to protect the overall get-up (the combination of the layout, images, colour scheme) of your packaging or product, then you could consider filing trade mark and applications for the front and back of pack.

You may also want to consider filing design applications for the different views of the product itself, if this is distinctive enough for design registration (design applications can also be filed with the UK Intellectual Property Office).

Branding elements protection summary:

  1. There are a number of different elements to consider protecting through trade mark registration: core brand name (plain words); stylised words; logo; design images; sub-brand names; label image; packaging/get-up.
  2. If you need to prioritise trade mark application filings, for example due to budget reasons, then you could consider applications for your core brand name (plain words) and logo as a minimum. With further applications made when your budget allows.
  3. Having a good coverage of different branding elements, will help you build a solid foundation for your portfolio and put you in a good position to take action against any infringements of your trade mark rights.
  4. We recommend working with a Chartered Trade Mark Attorney, to determine which trade mark and design elements are suitable for registration. Also, we recommend conducting the relevant clearance searches before filing any trade mark applications to ensure your proposed name and branding design images are available for use and registration.