​Your trademark DEFINES your business. It's essential that the trademark you pick is strong, or you're just wasting your time & money registering it.  

 

First, let's define what a trademark is:  A trademark is a word/phrase/logo that identifies the source of goods or services sold in commerce. 

 

It’s important to have a strong trademark that is inherently distinctive. This means your trademark quickly and clearly identifies you as the source of your goods or services.

 

STRONG TRADEMARKS

Strong trademarks typically consist of a word (or words) that are creative or unique, setting you apart from your competitors. Strong trademarks include words or short phrases that we call FANCIFUL, ARBITRARY, or SUGGESTIVE trademarks. 

 

FANCIFUL trademarks are invented words. They mean nothing except in relation to their goods or services. For example, Exxon® for petroleum, Pepsi® for soft drinks, Nike®, Amazon®, and X® for Twitter! These words are completely made-up! They make very strong marks because they are entirely FANCIFUL.

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ARBITRARY trademarks are real words, but ones which have no immediate association with the underlying goods or services. Think of the term APPLE for computers. If an apple orchard tried to register the word “apple” as a trademark for the type of apples they grow, that trademark wouldn’t be registerable, because it would be considered “descriptive” (see below). But, Apple® has been registered as a trademark for computers because it is arbitrary and unique. Others include Google® (search engine), Target® (stores), and Subway® (sandwiches).  Arbitrary marks are inherently distinctive and afford a high level of trademark protection. 

 

SUGGESTIVE trademarks are words that suggest some quality of the goods or services, but do not actually describe the type of goods or a quality of the goods or services. Consider Jaguar® for cars – it suggests speed and beauty.  Coppertone® for sun-tanning products – it suggests it will make your skin shimmer like copper. Others include Netflix® (for movie rental) and Microsoft® (for software) and Sleep Number® (for beds).

 

INHERENTLY WEAK TRADEMARKS

Weak trademarks are harder to protect against competitors and may not be federally registrable.  These include DESCRIPTIVE and GENERIC trademarks. DESCRIPTIVE trademarks are not arbitrary, fanciful or suggestive, but describe some aspect of your goods or services. (The difference between Suggestive and Descriptive marks is a subject of a great deal of legal debate!). Some examples of descriptive trademarks are: IBM, American Airlines, Creamy (for yogurt), Apple pie (for potpourri smelling of apple pie), Bed & breakfast registry (for booking services).  Descriptive marks CAN be registered, and CAN become strong, but you have to register them on the SUPPLEMENTAL TRADEMARK REGISTER first, and then later (if you can show evidence of distinctiveness) you can register them on the PRINCIPLE TRADEMARK REGISTER. The PRINCIPAL REGISTER is reserved for trademarks that are considered under the law to be inherently “distinctive.” (like Exxon). In contrast, the SUPPLEMENTAL REGISTER is for "non-distinctive" marks, which are trademarks that have not yet acquired distinctiveness or “secondary meaning” in the minds of consumers. 

 

The disadvantage of filing for registration on the Supplemental Register is that there is no automatic legal presumption of validity because a mark is presumed to be non-distinct. The benefits of Registration on the Supplemental Register are (i) You can say the trademark is “Registered.” (ii) You can use the ® symbol. (iii) You can sue for trademark infringement in Federal Court.  After five (5) years of usage and/or registration on the Supplemental Register, the registrant can apply for registration of the mark on the Principal Register.

 

GENERIC trademarks aren’t trademarks at all. They’re merely the common, everyday name for your goods or services. As such, they do not indicate source and cannot function as trademarks. Therefore, generic trademarks are not federally registrable. Some examples of generic marks are: “Bicycle” for bicycles; “Bagel shop” for a bagel shop; “E-ticket” for computerized reservation and ticketing of transportation services. These are generic, and cannot be registered.

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Even if you pick a great trademark, that is FANCIFUL or ARBITRARY, it can still be rejected is it is likely to be confused with somebody else’s mark that is in use and was being used before your registration. This is called LIKELIHOOD OF CONFUSION (LOC) and is the most common reason for a mark being rejected, so you have to take it seriously. Once you file your trademark, the USPTO trademark examiner conducts a search for conflicting marks and this includes looking for LOC issues. Likelihood of confusion exists between trademarks when the marks are so similar and the goods and/or services for which they are used are so related that consumers would mistakenly believe they come from the same source.

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Likelihood of Confusion is determined by looking at the following factors: (i) Similarity of the mark – the way it looks or sounds. (ii) Similarity of goods/services – are they similar, related or the same? (iii) Similarity of the parties' trade channels. (iv) The conditions under which sales are made to buyers (impulse or sophisticated purchasing decision), and (v) Evidence of actual confusion.

 

OTHER FACTORS TO CONSIDER

Consider how well the public will remember, pronounce, and spell your trademark. Consider the availability of the DOMAIN NAME and similar domain names. If you plan to market your goods or services outside the United States under the same trademark, consider whether your trademark has a different meaning when translated into a foreign language, particularly if the translated word could be considered offensive.

 

Once you have chosen a good potential trademark, you need to screen it to make sure it is available. Use the USPTO trademark search tool at https://www.uspto.gov/trademarks/search

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SHOULD YOU REGISTER JUST THE WORDS OF YOUR MARK, OR ALSO A LOGO?

Some trademarks are essentially just words, while others include logos or "devices". You might wonder if you should just file the word trademark, or also file the logo separately, or file a combined mark with words and logo. If your brand is represented mainly by a word, and you will pretty much always be using this word in conjunction with your brand, then it's generally easier and cheaper just to register the word(s) as a trademark. Registering just the word also provides broader protection for your brand. For example, think of "IBM", "XEROX" and "X". But if you are going to use the logo on its own, then registering a logo mark separately would be a good idea. Think of the Ferrari emblem which is usually used without the brand name. can safeguard the visual identity and prevent others from using a similar logo. Of course registering two marks doubles the cost. This is ultimately a business decision you need to make yourself and you must weigh the costs vs. benefits.

 

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