Top Tips for Choosing a Trademark

A trademark search is a basic first step if you are considering adopting a new trademark or service mark. With today’s computerized databases, a trademark search is relatively inexpensive and fast, and it is cheap insurance against having to change your mark or defend a lawsuit later. If you have a trademark search done by a service, be sure it includes Federal and State Registered Marks, at a minimum, and an opinion on the results.

Choose a mark carefully and be sure you’re not infringing

Don’t stop with registered marks—check out web search engines and the Yellow Pages to find anyone using the mark who has not (yet) registered. You wouldn’t want to spend a fortune adopting and promoting a mark nationwide, only to find out that a competitor has prior use rights. The test of a mark is “likelihood of confusion”—that is, is the proposed mark so close to an existing mark that it is likely to confuse the intended consumer as to the source of the goods? If there is any question, play it safe and try another mark (or consider contacting the prior user and getting her okay, if you really want to use a mark that might be a problem).

Choose the “strongest” mark possible

Marks vary in strength over a spectrum from a coined or invented mark, which can be very strong, through generic marks, which are not really trademarks at all. The stronger a mark is, the broader the protection it is afforded. Coined or Fanciful Marks have no meaning, outside the mark itself. Kodak or Xerox are good examples. Neither had any meaning in any language before they were invented to describe new products. Arbitrary marks use ordinary words, but the words are not associated with the product. For example, Shell for petroleum products, Wishbone for salad dressing, Amazon for a bookseller, Apple for computers. Suggestive marks are less broadly protected, since the words in the mark are associated with the product. They become stronger through use, as the mark acquires distinctiveness. Rent-a-Wreck for auto-renting services is suggestive. Descriptive marks convey an immediate idea of ingredients, qualities, or characteristics of the goods or services. “Very Best” might be a descriptive mark. Chapstick is descriptive, as it immediately suggests a stick for chapping. If the mark functions to identify the source of the goods, either when adopted or through use, it may be registrable, but it is afforded less protection than coined, arbitrary, or suggestive marks. The division between suggestive and descriptive marks is not always easy to spot. Generic marks, as noted, are not registrable and convey no rights at all.

Consider many sources of inspiration

Look in an encyclopedia or dictionary or to mythology or geography or history for words whose connotations are positive and appropriate to your product. Midas implies wealth (for mufflers? Must be a connection somewhere), Hercules for strength (registered for rope since 1870, among 198 other things), Mercury for speed (FTD florist symbol or boat motors), the Rock of Gibraltar for permanence (used by Prudential Insurance), George Washington for honesty (broth, apples, many others), Obsession for emotional appeal (a perfume brand).

Make up your own words

Coined marks can be very strong and valuable, and you can make them sound as if they mean something when they do not. Consider “Häagen-Dazs” ice cream (an all-American product made in New Jersey, but it sounds ever so Scandinavian), or the Oldsmobile Achieva or Compaq Presario (sound elegantly European but are meaningless), or Exxon gasoline (a purely coined mark slightly reminiscent of their former Esso mark and without the SO [Standard Oil] derivation). If you are planning for a line of products, consider choosing a mark that lends itself to becoming a “family” of marks. For example, Kodak has a wide variety of marks beginning with “Kod-” such as Kodell for fabrics, Kodalux for processing, and Kodachrome for film.

Avoid these marks

Some marks, otherwise valid, are either prohibited by law or convey no rights. These marks should be avoided: geographic origin or primarily a surname; scandalous or disparaging marks; obscenities; racial or ethnic epithets; insignia of a government agency or of certain organizations protected by law; marks that identify a living individual or deceased president during the life of his widow without consent; famous marks; clever misspellings of otherwise unusable marks; and marks using elements that are protected under other laws.

Watch out for pitfalls…

Foreign words should be evaluated in terms of their English meanings. The popular “Pschitt soda” from France, or “Bimbo” doughnuts from Mexico are unlikely to make it big under those names in English-speaking countries. “Barberskum” is a Scandinavian word for shaving cream that probably would not be a good choice in the United States. The Japanese Asse candy or B-M coffee are not good bets for import, either. English words should be checked for their meaning in foreign languages, if international marketing is contemplated. Some Coca-Cola bottlers found out that the Chinese characters they chose to represent the sounds Coca-Cola meant “bite the wax tadpole,” not a connotation they would have chosen. Eventually, they changed to characters that sounded the same but meant “happiness in the mouth”. Clairol’s “Mist Stick” fell flat in Germany, where “mist” is slang for “manure.” Consider regional variations in English, too. Other English-speaking countries may have problems with marks that are innocuous in American English. Although you can sell a “fanny pack” in American stores to American boys, British boys would find the suggestion laughable (they don’t have “fannies,” only girls do, and not in the same place). Most English speakers (other than Americans) would pronounce the letter Z as zed, while Americans use zee, so any mark depending on either pronunciation would fall flat in the other region (the many American E-Z product names just don’t have the same connotation when pronounced “ee-zed”). In reverse, we’ve been approached by a number of foreign clients over the years who wanted to register English words that were innocuous in their countries but had unsavory or offensive connotations here.

Source: Michael F. Brown (www.bpmlegal.com) retired in 2017 as partner in the Ithaca, New York, law firm Brown & Michaels PC. Contact the firm at 607)-256-2000; Chris Michaels’ email: michaels@bpmlegal.com.

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