Q.  How do I select a trademark?

A.  A trademark is any designation of source or origin used to identify and distinguish a good, or in the case of a service mark, a service.  As one court put it, “[t]rademarks help consumers select goods.  By identifying the source of the goods, they convey valuable information to consumers at lower costs.”  Scandia Down Corp. v. Euroquilt, Inc., 772 F.2d 1423, 1429 (7th Cir. 1985).  Trademarks are symbols of a company’s goodwill.  The following are some factors to consider in selecting a mark.   

1.  Consider choosing a strong mark versus a weak mark.

Some trademarks are stronger and easier to protect than others.  In assessing the strength of a mark, courts recognize four categories of marks: generic, descriptive, suggestive, and arbitrary/fanciful marks. 

 

Definition

Protectability

Generic

These are terms that are the common names for a type of product.  Examples:  banks, low-calorie beer, computer screen wipes.

Can never function as a trademark.

Descriptive

Marks that convey an immediate idea of the ingredients, qualities or characteristics of the goods. Examples:  ICE for beer, BABY BRIE for mini-size brie cheese, ARTHRITICARE for pain relieving gels for arthritis.

Protectable only if it acquires secondary meaning, i.e., the consumer learns to associate the mark with a single source.  Secondary meaning is usually acquired over time due to use, sales and advertising.

Suggestive

Marks that suggest something about the goods, but “require imagination, thought and perception” to reach a conclusion as to the nature of the goods.  Examples: CITIBANK for banking services, BLISS for beauty salon services, PLAYBOY for magazines.

Protectable without secondary meaning.

Arbitrary/Fanciful

Arbitrary marks are common words applied in unfamiliar ways.  Examples:  COCA-COLA for non-alcoholic beverages, CAMELS for cigarettes, APPLE for computers/electronics.  Fanciful marks are coined (made-up) terms with no dictionary meaning.  Examples:  EXXON, KODAK, ROLEX.

These marks are inherently distinctive, protectable without secondary meaning and are the strongest types of marks. 

Not all types of marks can be registered with the U.S. Patent & Trademark Office (“PTO”).  For example, “deceptive marks,” or marks that are misdescriptive of the character, quality, function, composition or use of the goods, cannot be registered.

In selecting a mark, there are also marketing considerations to consider.  While descriptive or suggestive marks are harder to protect, they are attractive in that they already convey some idea of what the product is.  For example, it is not uncommon for Pho noodle restaurants to use the term “PHO” in their marks.  In contrast, although arbitrary/fanciful marks are legally the strongest marks, take may require more marketing resources to create brand awareness.

2.  Conduct a trademark search.

Once a mark is selected, a trademark search should be conducted.  This is a systematic review of other marks currently in use that may be the same or similar to the proposed mark, or used in a context that may result in a likelihood of consumer confusion if the proposed mark was put into use.  The goal here is to avoid picking a mark that may have to be changed in the future due to a conflict with another mark.  Changing a mark can be expensive, not just because of the costs associated with changing signage and marketing materials, but because of the lost investment in the mark and the goodwill that may have accrued.  In addition, using a mark that is confusingly similar to another mark may expose a trademark proprietor to a potentially expensive damages claim. 

A trademark search also provides an idea of the protectablity of the mark.  If there are numerous similar marks in use for similar goods, the proposed mark may be considered “weak” and thus accorded a narrow scope of protection by the courts. 

Legally, foregoing a search can be risky business.  A defendant’s failure to conduct a search has been found by at least one court to constitute “carelessness,” weighing in favor of a plaintiff’s right to injunctive relief.  On the other hand, conducting a search may constitute positive evidence of good faith if the trademark proprietor is ever sued.

3.  Registering your mark.

Once a mark has been selected, consider registering it with the PTO.  In the United States, trademark rights arise from use, not registration.  However, while registration with the PTO is not required, there are some significant benefits to federal registration.  As a practical matter, judges, juries and adversaries will likely accord marks greater weight when they feature the federal government’s stamp of approval as evidenced by the issuance of a trademark registration.  Further, registration of a mark on the Principal Register constitutes prima facie evidence of the validity of a registered mark, the registrant’s ownership of the mark, the registrant's exclusive right to use the mark in connection with the specified goods or services nationwide, and continued use of the mark since the filing date of the application.  This can be very helpful during litigation.  Absent such registration, the scope of one’s trademark rights may be limited to the geographic territory in which the mark was used.  Another huge advantage of registration is that a mark can become “incontestable” after five years of registration, which precludes cancellation of the registration on the basis of prior use (e.g. likelihood of confusion with another mark) or descriptiveness. 

Trademarks can be an enormous asset of a company.  For example, consider the COCA-COLA mark.  According to the president of the Coca Cola Company, if all of the company’s buildings, vehicles factories and equipment were destroyed, the Coca Cola Company could still emerge from the ruins and rebuild itself provided that its trademark survived. The loss of the COCA-COLA mark however, would damage the company beyond repair.  Businesses should consider consulting an attorney for assistance in selecting, prosecuting, maintaining and enforcing their marks. 

Last revised Oct. 14, 2009.


Copyright_clip_image002_0002.jpgAllen M. Lee  Mr. Lee’s practice focuses on business, corporate and intellectual property matters, including the creation, protection and exploitation of intellectual property assets.  He counsels clients on business formation, general corporate matters, trademark, copyright, trade secret, patent, licensing, internet and domain name issues, among other things.  For more information contact: Allen M. Lee, a Professional Law Corporation, Tel: (650) 254-0758, Fax: (650) 967-1851, Email: allen@allenmlee.com, Internet: www.allenmlee.com.

 

 

 

 

 


 Copyright © 2010 Allen M. Lee, A Professional Law Corporation.  All rights reserved.