Selecting a Trademark

Selecting a Trademark

Issues to consider when selecting a trademark:
 

Distinctiveness

Generally, trademark law protects “distinctive” names, phrases, logos, symbols, numbers, characters, sounds, design and other marks that identify and distinguishes the source of a product or service.

Trademarks that are inherently distinctive are unique and immediately signal to the public that the mark represents a brand name. This is why certain trademarks are entitled to greater protection
than others.

Trademarks may also become strong over time as they become well known to the public through
their continued use.

 

Five types of trademarks from strongest to weakest are:

        • Fanciful – Made up names that convey nothing about the product or service (Xerox, Kodak).
        • Arbitrary – Not made up, an everyday word but not at all related to the goods or services. An arbitrary mark has no descriptive qualities (Apple Computer).
        • Suggestive – Words that require some thought to relate to the product or service, or provide only
          a vague description of what the goods or services might be (Coppertone).
        • Descriptive – Words that merely describe the product, service, ingredients, function or purpose
          of the goods or services involved (Quick Print). A descriptive mark can only be registered provided
          it has acquired “secondary meaning” – that the consuming public recognizes it as a brand.
        • Generic – Words that are the common way to describe the product or service (Coffee, Car Wash). Generic marks are not eligible for trademark protection. A mark can also become generic when
          the public thinks it is the common name for the product or service involved (Escalator, Aspirin).

Consider the Context

When selecting the right name for your business, product or service, it is important to consider that name within the context to which it will be applied. You cannot legally own the name “Apple” if you
sell apples – that’s the generic, everyday word for that product – although it is a very strong trademark as a name for computers.

Proposed marks that are “confusingly similar” to another trademark for similar goods or services
cannot be protected by trademark law. For example, you cannot use “Appel” for computers because
it is confusingly similar to “Apple” computer.

If your proposed name is a word or phrase that others would likely use to describe their products or services, it is probably a weak mark. Even if the mark indicates the source of the goods and is used as
a trademark, the law will allow others to use it in its descriptive, non-trademark way. For example,
even if there is a “Fast Cycle” brand on the market, any bicycle manufacturer would still be able to describe their “fast cycle” when describing their product.

For suggestive, arbitrary and fanciful marks there is no reason for anyone to use a mark that has been appropriated as a trademark. There is no competitive need and any such use would be an infringement of the trademark owner’s rights. That’s why these are considered the strongest marks.

 

When selecting a mark, consider also:

                  • How it looks when written
                  • How it sounds when spoken
                  • What it means

You may want to keep several alternatives in mind – just in case your proposed trademark is not available.

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