QUESTION: How Do I Choose a Good Trademark?
ANSWER : Choosing the right name or logo for a business or product is an art. Companies sometimes pay thousands of dollars to marketing and identity research firms to help them find the “perfect” name for a product or business. This is oftentimes money well spent, since the value of a name can repay those costs many times over, once consumers internalize the name and return to it for repeat business. A name can even become a status symbol of sorts, e.g. Nike, Ty, or Guess, allowing companies to charge well over the normal markup for the product. Whether you spend thousands on naming experts, or can only afford to pull a name out of a hat, the naming process is woefully incomplete without a legal analysis of a name’s trademark potential.
Unfortunately there is no quick formula for choosing a good mark. However, As a general principle, you will want one that is (1) distinctive, and (2) not forbidden, and (3) not preempted by an existing trademark. Begin by selecting selecting several possible marks that are not forbidden, and are strong enough legally for your purposes. If you start with too few marks to begin with, you may find after searching for possible preemptive marks that all your choices have been taken.
Print out a checklist for selecting a good trademark at: Trademark Selection Checklist.
The Mark is Distinctive
Distinctiveness is a prerequisite to obtaining protection through the court system and for registration of a trademark on the Principal Register of the U.S. Patent and Trademark Office. The legal definition of distinctiveness is fairly obtuse, namely, the ability to communicate the source of goods or services to consumers immediately upon first use of a trademark. Thus, it may be more insightful to describe distinctiveness in terms of examples. A mark is “inherently distinctive” if it is:
Fanciful, or completely made up (e.g. EXXON, KODAK, or REEBOK);
Arbitrary with respect to the underlying goods or services (e.g. APPLE for computers, BLUE DIAMOND for nuts, or GREEN LEAF for insurance), or
Suggestive of the the qualities of the underlying goods or services (e.g. COPPERTONE for suntan oil, ROACH MOTEL for insect traps).
Some trademarks that are not fanciful, arbitrary or suggestive may become distinctive through extensive use and/or advertising. Where such use or advertising results in a trademark permeating the marketplace, and gaining a requisite level of market recognition among consumers, then the trademark is said to have acquired secondary meaning. As such, it is capable of receiving protection from the courts, and can be registered with the USPTO in the same manner as inherently distinctive marks. Marks that are capable of “acquiring distinctiveness” include:
Descriptive marks, which closely describe the qualities of the underlying goods or services (e.g. NATURE’S MEDICINE for food supplements, BUFFERIN for buffered aspirin, or WORLD BOOK for encyclopedias).
Words that are viewed primarily as surnames by consumers; or
Words that are viewed primarily as geographic terms by consumers.
Finally, generic marks (those consisting of the name or picture of the product itself) are never distinctive and cannot be protected, no matter how widely recognized they are by consumers. Examples of generic terms are DISCOUNT MUFFLERS for car muffler repair and replacement services, DOS for a computer operating system, and SHREDDED WHEAT for breakfast cereal.
Legal Strength
Marks that acquire their distinctiveness, as opposed to those that are inherently distinctive, generally receive less protection from the courts, and are said to be weaker than inherently distinctive marks. Furthermore, there is a continuum of legal strength even among inherently distinctive marks. Fanciful marks are the strongest legally, and receive the greatest amount of legal protection from the courts, while arbitrary marks are only slightly less strong, and suggestive marks even less strong. The difference between a mark that is legally strong versus one that is legally weak is that the weaker marks cannot exclude other uses as broadly. For instance, in order for there to be infringement of a weak mark, the infringing mark must be a lot more similar in look, sound or meaning than is necessary for infringement of a stronger mark. Also, where products are not exactly similar, but are closely related, the owner of the stronger mark will be able to exclude similar marks, while the owner of a weaker mark will not be able to do so.
Marketing Strength Versus Legal Strength
It is worth noting that oftentimes names have a strong marketing appeal, but are weak legally. It is a lawyer’s unfortunate job in this world to dwell on the risks of choosing a legally weak mark. However, there often are good marketing reasons to select a mark that isn’t the strongest from a legal point of view. For instance, a mark that describes the underlying product itself is useful from a marketing perspective because it immediately conveys to the consumer what it is that the business or product does. Arguably, this requires less initial investment in advertising since potential customers can find businesses or products with descriptive marks more readily. However, the short-term marketing potential of a descriptive mark may not outweigh the long term advantage of having stronger legal rights in a mark. Only you can make the decision as to which of these two ends of the spectrum, marketing potential versus trademark potential, is more important for your business.
For more information on this topic, visit the MarkLaw page entitled, Legal Strength of Trademarks.
The Mark is not Forbidden
In addition to generic marks, several other categories of marks never receive legal protection. If you adopt one of these marks, anybody can copy your mark without consequence. These are sometimes referred to as prohibited or forbidden trademarks, and include:
(1) Immoral, or scandalous marks;
(2) Marks which disparage any person, institution, belief or national symbol;
(3) Marks consisting of a living person’s name, portrait or signature, unless written permission has been granted;
(4) Deceptive marks (i.e. those that are either used intentionally to deceive or in fact cause consumers to rely upon the deceptive aspect when making purchasing decisions).
(5) Marks consisting of a deceased President’s name, portrait or signature unless that President’s spouse has granted written permission or is no longer alive;
(6) Marks consisting of a flag, coat of arms or other national insignia; and
(7) Marks which are primarily functional (i.e. those where the feature for which protection is sought has a primarily utilitarian purpose to improve the salability of the product).
The Mark is not Preempted by a Prior trademark
Marks that are already being used have prior rights, and their owners can stop you from using that same mark. It is not only exact versions of the mark that may preempt your proposed marks, but also any mark that is confusingly similar. If you adopt a mark that is confusingly similar to an existing mark, then you may be liable for trademark infringement, with the possible consequences ranging from having to give up all use of your mark, to having to pay treble damages, attorneys fees, court costs, and prejudgment interest. To avoid these consequences, you should conduct a reasonable search of existing marks in the region in which you intend to promote your goods or services. No search guarantees that you will find all existing marks. Thus, there is always some uncertainty and risk involved in using trademarks. However, conducting a search reduces those risks profoundly. In sum, if you fail to conduct a reasonable search of existing marks, you stand a much greater chance of (1) infringing someone else’s mark, and (2) having to pay monetary damages in the event you are sued for your infringement.
Ideally, there are two stages to searching for a prior rights in a mark that may preempt your own. The first stage is called a knock-off search, and consists of looking for exact matches of the proposed mark in such places as the U.S. Patent and Trademark Office database (http://www.USPTO.GOV/tmdb/index.html), and the Internet. This preliminary search can be conducted by you, or you can hire a professional search firm or attorney to conduct the search. (See Pliam Law Group, PA fees for this service). If you conduct this search yourself, you may want to also look at the Yellow Pages in your region and/or trade journals in your industry. Professional search firms vary widely in what they search for at this preliminary stage. All will probably look at a more current version of the USPTO database cited above. Some may look at the Internet, and some may even look at various databases of non-registered marks (or common law marks). Pliam Law Group, PA searches a subscription-only database that provides current USPTO data and Internet hits for the mark, and then searches a moderate-sized database of common law trademarks.
If the marks you have selected survive the knock-off search phase, then you can begin stage two: a full search of existing and pending trademark registrations, and of common law marks (ones that are not registered, but have preemptive rights because of prior use). A KNOCK-OFF SEARCH ALONE IS INADEQUATE to determine whether a mark is available for use. That is because the preliminary knock-off search only tells you whether someone is already using the exact version of your mark. Yet, as described above, it is not only the exact marks that can preempt your proposed mark, but also those that are confusingly similar. In short, marks that sound alike, look alike or have similar meanings are confusingly similar.
It is strongly advised that you hire a professional search firm to conduct a full search of your mark at this stage. Many such firms have software programs that systematically generate all conceivable search terms. For instance, if one of the words in your proposed mark is “SMART,” then the program will generate searches that start with “s” and end in “t,” or start with “s” and have “art” somewhere in the middle or end. The software program will also likely generate searches that include synonyms such as “INTELLIGENT” or “WISE” in place of smart. Thus, if the full mark is “SMART GRIP,” the program will also generate searches for “WISE GRIP” and “INTELLIGENT GRIP.” These are but minor examples of the painstaking combinations of search terms that a program can instantly generate and search. For a human to duplicate these combinations and perform the requisite searches is not only enormously time consuming, but risks human error.
The final step in determining whether or not a mark is available for use, is to interpret the search results. This sounds easier than it actually is. There is a complex body of law that defines what is confusingly similar. For this reason, you are well advised to hire an attorney to interpret search results. The legal opinion of an attorney can serve not only as immediate advice on the risks in adopting a given mark, but if the opinion is written, which most are, you may be able to deter companies owning marks analyzed within the opinion from suing for infringement by showing them that an attorney has already decided that the marks are not confusingly similar. Since legal opinions focus mostly on those marks that are likely to lead to claims of infringement or dilution, this second benefit of opinions is no small advantage. Of course, a legal opinion can never guarantee that you won’t be sued, nor even that you will prevail in a lawsuit if you are sued, since there is so much subjectivity in trademark law. However, an opinion goes a long way toward helping you control the risk of future litigation.
