How to Select Strong Trademarks Print PDF

A trademark identifies the source of your product or service and is a symbol of the goodwill of your company. Further, it conveys to the customer that the product or service is of a certain quality or standard, and distinguishes it from the goods or services of other companies.

A poorly selected trademark may lead to legal disputes and lost business. This makes your trademark one of the most important assets your business will own. Accordingly, it is essential to select a strong trademark. The following are some general considerations for choosing a suitable and legally allowed trademark.

While a trademark should be memorable and marketable to consumers, in order to be protectable under trademark law and enforceable against third party use of confusingly similar marks, it must be distinctive.  A distinctive mark clearly distinguishes your product or service from competitors’ products and services. The following “spectrum of distinctiveness” is commonly used to determine the strength of a mark, according to where it falls on the spectrum.

  

• Fanciful. Fanciful trademarks are made-up words not found in the dictionary. They were coined for the sole purpose of functioning as a trademark. These are the strongest marks and maintain the strongest protection (including protection in noncompetitive industries). Well-known examples include GOOGLE®, EXXON® and PEPSI®.
• Arbitrary Marks. Arbitrary trademarks are dictionary words but have no direct relationship to the product or service offered under the mark. APPLE^® is an arbitrary mark because it is used in connection with computer and mobile phone equipment and not food. Arbitrary marks are also inherently distinctive and provide very broad protection.  
• Suggestive Marks. A suggestive mark is one that suggests or hints at qualities or characteristics of a product or service rather than directly describing such qualities or characteristics. These marks require thought or imagination to determine the products or services to which they apply. A company may develop a list of qualities they want the public to associate with their product. Quickness, elegance, comfort, and other positive qualities provide a starting point for many protectable trademarks. An example is GREYHOUND® for a bus line. Suggestive marks are distinctive, but not as strong as fanciful or suggestive marks, and generally have more limited protection (third parties can more easily adopt similar marks for related products and services).
• Descriptive Marks. Descriptive marks describe a characteristic, function, quality, feature, or purpose of the product or service. U PARK IT, for a self-service parking lot, would be a descriptive trademark. For business purposes it may make sense to use a descriptive mark because it makes it easy to recognize the type product or service being offered. However, descriptive marks are provided limited protection and are considered weak trademarks, unless they acquire distinctiveness through secondary meaning. This means that over time, a consumer associates the owner with the source of the product or service. Demonstrating secondary meaning requires a showing of factors such as the length and exclusivity of use of the mark, volume of sales, significant and continued advertising, and consumer survey and direct evidence. Note that surnames and geographically descriptive marks are also generally weaker and afforded less protection.
• Generic Marks. Generic marks are those that name a product or service but cannot function as a trademark because the mark is the generic name of the product or service. A company cannot be denied the right to call a product or service by its name. For example, no one company can claim exclusive trademark rights in the term “beer” for a malt beverage. Marks can also become generic once they are so well-known (or misused by the public) that the mark becomes the generic name of the product or service. Examples of marks that became generic are aspirin and escalator.  In addition, changing the spelling of descriptive or generic words (EZ for Easy) offers little or no additional protection.

Also note that if you plan to use your trademark internationally, make sure it doesn’t translate into something which may be inappropriate or undesirable in another language. One unfortunate example was the usage of the automobile trademark “Nova” in Spanish-speaking countries, where the name translates into “It doesn’t go.”

Striking the right balance between distinctiveness and descriptiveness can be a difficult task. In addition, regardless of where the trademark you choose falls on the distinctiveness scale, be sure that it is not confusingly similar or the same as any other trademark in use for similar products and services in the same geographic area. Accordingly, to avoid spending unnecessary time or money, and to ensure that your trademark is suitable and protectable, it is important to consult an attorney early in the selection process.

This article is provided for general reference. It does not constitute legal advice. Legal advice may be provided based only on specific facts. Please consult us or your other legal advisor before relying on any general information stated herein. We are happy to discuss any questions you may have regarding trademarks.