Choosing a brand name (a.k.a. a trademark) is one of the most important steps in launching your company. If you select the wrong brand name, you will not be able to secure trademark rights. You may even find yourself in a position where a prior user forces you to stop using your mark after you have spent significant time and money in building the brand. Thus, it’s critical that you choose the right trademark and register your trademark with the US Patent and Trademark Office (USPTO).
What is a trademark
A trademark (“mark”) is a word, phrase, design, symbol, or combination thereof that identifies and distinguishes the source of one company’s products/services from that of another. Having a strong mark is important to secure your brand’s preeminence in the marketplace and prevent others from registering confusingly similar marks to those of your own. When used in interstate or foreign commerce, trademarks may be registered with the USPTO. This federal trademark registration will provide you with nationwide trademark rights.
Choosing a strong trademark
To function as a trademark, the mark must be distinctive. The level of distinctiveness determines the level of protection. Generally, there are several different levels of distinctiveness, ranging from fanciful marks having the strongest level of protection to generic marks having no protection. The image below illustrates the spectrum of trademark protection.
The strongest and most protectable brands are fanciful terms. Fanciful marks are comprised of fabricated words or phrases. These marks do not have any other meaning besides their association with the goods or services. Becoming your own lexicographer is the simplest way of ensuring meaningful and robust trademark protection for your brand.
Examples of fanciful trademarks include: EXXON, KODAK, and ADIDAS.
Arbitrary trademarks are the second strongest classification of trademarks. An arbitrary mark includes a term defined as something other than the goods or services rendered under the mark.
One such example is the APPLE brand for computers and electronics. Specifically, the common dictionary definition for “apples” is a type of round, edible fruit from a tree. However, the APPLE mark is used to describe computers and electronics rather than the edible fruit of a tree. Thus, the mark is deemed an arbitrary trademark.
The next tier is the suggestive mark. While they are not as distinctive as fanciful or arbitrary marks, these marks require a consumer to use some degree of imagination to determine the products. Additionally, suggestive marks may also embody certain qualities or characteristics of the goods or services offered under the brand, such as NETFLIX. Specifically, NETFLIX suggests to a consumer that you can watch movies (FLIX) over the internet (NET).
On the scale or distinctiveness, descriptive marks are some of the weakest types of trademarks. As their name suggest, they simply describe the products and do not require ordinary consumers to use their imagination. If a mark is found to be merely descriptive, the USPTO will refuse registration on the principal register. However, these mark can be registered on the supplemental register instead. Descriptive marks are protectable on the principle register only with a showing of “secondary meaning.” Secondary meaning requires that ordinary consumers recognize the mark as a trademark, rather than an ordinary word.
Examples of descriptive marks include BRITISH AIRWAYS, PIZZA HUT, or AMERICAN AIRLINES.
The fifth and final classification, generic terms, can never function as a trademark. Generic terms simply function to describe the goods or services being provided. Examples of generic terms would include BEER AND WINE for someone selling beer and wine products. The USPTO will not register generic terms on the primary or the secondary register. Such a registration would prevent others from generically describing the products they provide. Generic terms can never be registered or serve as trademarks.
Conducting a trademark clearance search
Once you have selected a strong brand name, it’s important to determine if another is using the same or similar brand name for similar goods/services. The USPTO will refuse to register your trademark if it is confusingly similar to another trademark registration or application. Therefore, you want to choose a brand name that is unique in connection with your goods/services.
A search can also be performed to determine if there is any use of your trademark in the marketplace. A prior user may have established rights in certain geographic areas or throughout the nation. The extent of those rights depends on the extent of the use. Ideally, you will choose a trademark not in use by a prior user and avoid issues that may arise as a result of the prior user’s rights.
When choosing a brand name, it is crucial to choose a strong trademark and conduct at least a preliminary search. If you approach the trademark selection process in a diligent manner, you should have a clear path forward in developing your brand. Your trademark is a valuable asset, and it is essential to understand how to best select your trademark effectively.