Tips for Selecting a Strong Trademark
Trademarks are one of the most important assets of a business, as they are a symbol (e.g., word, phrase, design) that allows your customers to associate your product/service with your enterprise. It's what stands you apart from your competitors and what will help you shine in any marketplace. Furthermore, a strong trademark assists in the success of your business by capturing a potential consumer’s attention. The problem is there are thousands of registered trademarks in the U.S. and countless other marks being used in commerce. This can make the trademark selection process feel long, tricky, and frustrating. Thankfully, we are more than prepared to help you with this task. Let’s begin!
The strength of a trademark will vary, depending on its ability to identify the goods and/or services your business offers and distinguish them from competitors. It helps to visualize marks as follows, from weakest to strongest: Generic, Descriptive, Suggestive, Arbitrary, and Fanciful.
Both generic and descriptive marks are the weakest types of marks. They are generally unprotected by trademark law, with a few exceptions, mainly because they communicate the type of goods or services offered, rather than identify the source of such offerings. We highly recommend you check out our “Trademark FAQ” for more information on trademarks and their registrability.
This means that you should focus on selecting a mark that is either Fanciful, Arbitrary, or at the very least, Suggestive. For best results, we recommend following these tips:
Identify the specific goods and/or services your company will deal with and make a list of all associated generic or descriptive words and phrases that come to mind. The resulting list will be composed of marks that you won’t choose as your trademark, since they are likely to be unprotectable under trademark law.
Avoid, at all costs, the use of words that will likely cause consumers to be confused or mistaken about the source of a product or service. For example: “Big Mak” versus “Big Mac” for fast-food hamburgers.
Research your potential competitors. Learn what they are using to identify their goods and/or services and figure out how you can differentiate your mark from theirs.
Try to invent a new term (fanciful mark), like “Adidas” did with their sports apparel or “Rolex” with their line of fine watches.
As an alternative, find a word that already exists, but that does not suggest or describe a significant ingredient, quality, or characteristic of the goods and services offered by your company (arbitrary mark). This is the case of “Apple” for personal computers or “Amazon” for retail services.
You may also think of a mark that requires imagination, thought, or perception to reach a conclusion as to the nature of those goods or services being offered by your company (suggestive mark), although we recommend you stick to Tips #4 and #5. Examples for this type of mark are “Netflix” for streaming services or “Coppertone” for suntan oil.
Brainstorm with close friends or partners. Two (or more) minds think better than one.
Use your favorite search engine (*Google*) to probe your shortlist of potential marks.
Once you have a good lay of the land, you should take your shortlist and consult with an attorney that specializes in trademark law. A trademark attorney will have the necessary expertise required to perform a trademark viability analysis for your suggested marks, including a thorough clearance search on federal/state trademark registration databases and the Internet, to determine the strength and protectability of your proposed mark.
Lastly, after consulting with your trademark attorney, register the selected mark.
If you followed our tips, at the end of the trademark selection process, you will have chosen a strong mark, which should improve your chances of being approved for registration, thereby adequately protecting one of your most precious business assets. As you can see, this process involves a lot of thinking and time on your behalf, but visualize it as setting your trademark up for success. If you select a weak mark, you’ll have less protection available and, as if this wasn’t a problem by itself, it is likely that the mark’s recognition and influence over an individual’s purchasing decisions will be poor or non-existent. Take your time, follow our tips, and steer clear of a weak trademark. You’ll be happy that you did.