Trademark selection is the process of deciding to move forward with a particular name or brand as a trademark. Brand Registry Trademark assists online sellers with trademark selection.
How do I select a good trademark?
It is important to understand that some trademarks are inherently stronger and more protectable and enforceable than others. Some trademarks are not protectable or enforceable at all for reasons that have nothing to do with likelihood of confusion with others’ trademarks. Also, some terms that are not initially protectable may gain protection after some period of use and advertising. The discussion below explores the preliminary principles behind selecting a good trademark.
Trademarks are more usually protectable and enforceable the more distinctive they are. Trademark law divides trademarks into four categories of distinctiveness, which are presented here in order from least protectable to most protectable:
Generic trademarks are the weakest and least protectable. A generic term is the common name or term for a type of product made by many different companies. Under trademark law, a generic term cannot be a trademark.
Examples of generic marks include:
- BICYCLE for bicycles or retail bicycle stores;
- MILK for a dairy-based beverage; and
- TIRES for retail tire store services
Even if a trademark did not start as generic, it can become generic through misuse or long-term, widespread, non-trademark use. Examples of marks that became generic over time are:
- ESCALATOR for moving staircases;
- ASPIRIN for pain relief medication; and
- CELLOPHANE for transparent wrap.
Descriptive marks are rarely protectable at first, but they can become protectable over time. A descriptive mark says something about the product like a characteristic, quality, purpose, or component. One way of determining if a mark is descriptive is if it conveys an immediate idea of a characteristic, quality, purpose, or component of the goods. Because descriptive marks describe something about a product more than identify its source, they are not protectable until the consumer learns to associate them with a single source. This learned association is called “secondary meaning.” A descriptive mark may only be protected when secondary meaning can be shown. Secondary meaning is usually developed over some period of use, sales, and advertising—usually years.
Examples of descriptive marks include:
- CREAMY for yogurt;
- WORLD’S BEST BAGELS for bagels;
- YOUR CLOUD for computer security consulting for data storage;
- ULIMATE BIKE RACK for bike rack and design; and
- COM for online hotel reservations.
Suggestive marks are readily protectable. Suggestive marks differ from descriptive marks in that, rather than describing something about the goods, they suggest something about the goods and require some imagination, thought, and/or perception to reach a conclusion as to the nature of the goods.
Examples of suggestive marks include:
- QUICK N’ NEAT for pie crust;
- GLANCE-A-DAY for calendars; and
- POM for pomegranate juice.
Arbitrary and fanciful trademarks are the most distinctive, strongest, most protectable, and most enforceable types of trademarks. Arbitrary marks are common words applied in an unfamiliar way.
Examples of arbitrary marks include:
- BANANA for tires;
- IVORY for soap; and
- HORIZON for banking services.
Fanciful marks are coined (made-up) terms with no dictionary meaning.
Examples of fanciful marks include:
- BELMICO for insurance services;
- PEPSI for cola beverages; and
- CLOROX for cleaning solution.
If online sellers have advance understanding of the above preliminary trademark principles and use them to select sufficiently distinctive trademarks, names, and brands, they are much more likely to succeed at the United States Patent and Trademark Office (USPTO). Once a trademark is selected using these principles, trademark clearance searching should be performed to make sure that the proposed trademark is not confusingly similar with prior, third-party trademarks.
Contact Brand Registry Trademark today to work with experienced trademark attorneys so that you can better select a protectable and enforceable trademark.