When computer software first starting rolling out about thirty years ago, it was possible to get a trademark registered for simply ‘computer software.’ Now, of course, it is necessary to be more focused.
Choosing a Good Trademark
- The strongest mark is a made-up word such as Microsoft®, which combines elements from the words micro-computer and software.
- The next best is a name that’s a real word, but has nothing to do with the goods or services, such as Apple® for computers or Blackberry® for personal computing devices.
- Choose a mark that is evocative and distinctive, without being descriptive.
Choosing a Bad Trademark
- Make it clearly descriptive: For example, don’t try to register a new HTML programming editor as HTML EDITOR.
- Make it confusingly similar to another trademark, so as to either improve your business or devalue another business: This makes for a bad trademark and possible law suits. Don’t try to register MACROSOFT for computer software.
Do You Need a ‘Family’ Brand?
- If you are going to have several different software products, consider having an over-arching brand. For example, Electronic Arts® is the over-arching brand for a family of software which is also individually registered as trademarks, such as Need for Speed® and Medal of Honor®l
- Different considerations usually govern for a ‘family’ brand.
Description of Wares and Services
- CIPO requires that you translate the description of your software into a jargon that CIPO will recognize.
- Providing the correct wares and services involves balancing the need for specifics with the desire to claim as broad a field as possible,
- Providing a CIPO-acceptable description helps greatly to ensure that you get the coverage you expect and need, and reduce time and expense.
TIP: Search Before You Commit
The best time to check for trademarks and other potential problems is after the design phase but before the production stage. Otherwise, you could end up with legal problems and wasted time and money on a brand you have to abandon.