A Short Overview on Selecting a Trademark

Mark E. Stein, Esq.

Board Certified Intellectual Property Attorney

Mark Stein Law

In selecting a trademark, you have the same primary goal as your competitors. You want to select a  strong mark which conveys to the consuming public that particular goods and services come from your company and not from one of your competitors. The purpose of this article is to provide you a very brief general overview of how to identify and select “strong” trademarks.

Too often, businesses do not select strong names to identify their products and services.  Instead, many business select names which describe their goods or services and sometimes incorporate generic or merely descriptive terms.  This practice can result in consumer confusion and lost business and also can cause your company to lose one of its most valuable monetary assets, it trademark.

How to Select a Strong Mark

If your company uses trademarks to identify its goods and services, then one important goal is to protect your trademark.  You want to be able to prevent others from using a mark that is the same or confusingly similar mark to your company’s marks.  The strength of your company’s  trademark is one of the factors Courts will analyze to determine if you can stop another from using a mark. The stronger your trademark, the easier it is to prevent others from using a mark your company considers too close to its trademark.  To understand which marks are strong, consider the line below.  Every trademark falls somewhere on this line:

A “generic” term is the name by which something is commonly known, such as “computer” or “legal services.” It is the commonly known name of the good or service being sold. Because no one can claim exclusive rights in generic terms, they are unprotectable. They cannot be registered as trademarks and you cannot prevent anyone from using a generic term. You should avoid Generic terms in the name selection process.

“Descriptive” marks convey an immediate impression about the ingredients, quality or character of goods or services, such as “VISION CENTER” or “COMPUTERLAND.”  These marks  typically have  a limited scope of protection and are generally considered on the weaker. Depending upon its distinctiveness, a descriptive mark may be strengthened through exclusive, extensive use. However, the concepts of secondary meaning and inherent distinctiveness are beyond the scope of this article and not discussed here.

“Suggestive” marks are words or phrases which require thought, imagination and perception to reach a conclusion about the goods or services to which they apply. These marks suggest information about the goods or services they identify, but require the consumer to take time to think about the mark.  For example, the mark COPPERTONE for suntan products is considered suggestive because it suggests to the consumer that a user of the product would get a “copper tone” to their skin. Most suggestive marks, depending upon their uniqueness, are considered to be strong to very strong.

The strongest marks are “Coined/Arbitrary” marks.  These marks fall into two categories.  They are either ordinary words used in a fanciful or arbitrary way so that there is no association between the mark and the goods or services to which it identifies, such as APPLE for computers and electronics. Or they are completely “coined” or made up terms such as HAAGEN DAZS for ice cream. These types of marks are routinely considered strong and are given broad protection by Courts.

In considering and selecting a trademark for your company, it is best to try select and adopt marks that are “Suggestive” or “Coined/Arbitrary,” because marks in these categories are most likely to be strong and easier to protect.  There are many considerations outside the scope of this article, however this article provides a starting point

This article is meant to provide the reader with a general overview of a complex area of law.  It is not intended to provide legal advice, nor is it meant to eliminate the need for consulting an attorney with expertise in the area of Intellectual Property law.