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.
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
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
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
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
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.
Start-ups choosing a business name
Established businesses considering a rebrand
Accountants, lawyers, and advisors guiding clients
Marketing professionals collaborating with legal teams
