A fundamental consideration that is often overlooked is how to select a trademark that is both federally registrable and legally protectable. With this knowledge, you just might save yourself some valuable time and money.
Now, you might already have a pretty good idea of what you want your mark to be. In fact, you might be 100% certain that the mark you have now is the one you want to register. Or, perhaps you’re in the initial stages of creating your mark and are just brainstorming ideas. It is critical to note that the USPTO examining attorneys apply rules when examining your trademark application to determine whether your mark may be registered.
The first thing we need to do is remind ourselves what a trademark is and what it does:
First, let’s look at the concept of “likelihood of confusion.” Essentially, a “likelihood of confusion” exists when 1) the marks of the parties are similar and 2) the goods and services of the parties are related in such a way that consumers are likely to believe they come from the same source. That is, the marks look alike, sound alike, have similar meanings, or create similar overall commercial impressions.
And the goods and services are identical or are related in such a way that consumers would be likely to assume that only one company provides all of the goods and services when, in fact, the goods and services come from more than one source.
So, when you are selecting a trademark for your business, be careful not to select one that causes a likelihood of confusion with another mark. Your application will be rejected by the USPTO and you could open yourself up to an infringement law suit by the owner of the other mark.
Instead, it’s safer to search for similar marks that are used on related goods and services before filing. This is called a “clearance search” and involves searching federal and state trademark registration databases. It also involves a search for common-law unregistered trademarks by searching the Internet for websites and articles involving similar marks being used for goods and services related to yours.
Selecting a mark that avoids a likelihood of confusion will go a long way toward making sure your mark “distinguishes the source” of your goods and services.
Now, to address “identifying the source” of your goods and services, let’s turn to our second main concept, the strength of the mark. In a legal sense, a strong trademark is one that allows you to more easily prevent other parties from using your mark and it is one that is easier to protect than “weaker” marks.
The weakest marks aren’t even really marks at all. They are generic words that are incapable of identifying source. These are common, everyday names for goods and services and are not registrable by themselves.
Descriptive terms are stronger than generic terms, but are still very hard to protect. Descriptive terms directly tell you something about the goods and services and generally are not registrable without showing that a mark has, through long use, become a source identifier. Descriptive marks are harder to register and protect because they merely provide information about the goods and services. They don’t “identify the source” of goods and services and “distinguish the source” of the goods and services from others.
Moving along to suggestive marks, this is where things start to get distinctive. As the name implies, they “suggest” qualities or characteristics of the goods and services, without actually describing them. Suggestive marks are registrable and are the next best thing to the hottest and strongest types of marks: “fanciful” marks and “arbitrary” marks.
“Fanciful” and “arbitrary” marks are the easiest types of marks to protect because they are inherently distinctive and immediately function as source identifiers. They are typically creative or unusual, so it is less likely that other parties are using them for related goods and services. “Fanciful” marks are invented words with no dictionary or other known meaning. “Arbitrary” marks are actual words with a known meaning, but words that have no association or relationship with the identified goods and services.
Choosing a fanciful or arbitrary mark is a great way to help consumers identify the source of your goods and services and distinguish them from the goods and services of others. These kinds of marks are immediately protectable.
Be aware, however, that warm and hot marks can cool over time. Without proper policing, a strong mark can become weak, even generic.
So, make sure to select a distinctive mark and to protect your mark once you start using it. That will help consumers recognize your mark as the source of your goods and services.
There are others factors to consider, however, and they may also prevent your mark from registering. Some of them include situations where the mark is a surname, geographically descriptive, deceptive, disparaging or offensive, a foreign term that translates into a descriptive or generic term, an individual’s name or likeness that is being registered without proper consent, a title of a single book or movie, and matter that is purely decorative or ornamental.
Although we are not going to cover those topics here, you should be aware of them, as they are potential bars to registration. For more information, consider hiring a trademark attorney for advice.
In addition to selecting a mark that avoids USPTO refusals, you should also consider how the mark will function in the marketplace. Is it easy to pronounce, remember, or spell? Does it translate to something offensive in a foreign language? These are just some of the additional concepts to consider.
That’s a lot to think about. And it can seem daunting. If you feel overwhelmed, you might want to consider hiring a trademark attorney to advise you. It isn’t required, but an attorney skilled in trademark law can help you think through all of the complex issues.
Keep in mind that selecting a mark is one of the most important aspects of building a brand for your business. It’s the most visible outpost of your company and it represents all the goodwill created by your long hours and hard work. It lets consumers know that when they see your mark, they’re buying a quality product or hiring a dependable service.