HOW TO SELECT A GOOD TRADEMARK
Some considerations to the selection of a good trademark.
The Makings of a MarkSome of the most common questions I face from potential trademark clients are "How do I pick a good trademark?" and "What is a good trademark?" The answer is, "A good trademark is one that helps distinguish your goods and services from everyone else's." Further, when seeing your trademark, consumers cannot be confused into thinking that your goods or services originate from another company, or are affiliated with another company, or are sponsored by another company, and making a purchasing decision on the basis of that confusion. This post outlines the process for picking a good trademark........but first some definitions and some ideas to ponder.
What exactly is a Trademark?A trademark is a source identifier. It identifies the source of the goods or services in connection with which it is being used. It is a short hand manner of communicating to consumers, the company that provides the goods and services on which the trademark is used. Anything can act as a trademark. Think Nike(R) "Swoosh." Think Adidas(R) "Stripes." Think UPS(R) "brown" (yup, the color). Think Christian Louboutin(R) "red sole." Think Target(R) "bulls eye." Think a particular perfume or aroma. Think Coca Cola(R) jingles. Anything can act as a trademark, so long as it is used on goods or services in commerce. And "Anything" really means anything (Well, not quite anything. There are some exceptions, but for purposes of this write up, "anything" is really anything).
A trademark can last forever as long as it is being used in commerce. Unlike a patent or a copyright, which expire after a certain period of time, a trademark never dies. So long as it is being used in commerce in connection with goods or services, it can last indefinitely (for that reason alone, I love trademarks).
How Do I Select a Good Trademark?The Courts in the United States have recognized that there are four types of trademarks: inherently distinctive, suggestive, descriptive, and generic. Inherently distinctive and suggestive are the trademarks that courts protect all the time. The courts have clearly stated that inherently distinctive and suggestive trademarks merit protection. The courts have further stated that descriptive trademarks merit protection only if they have acquired secondary meaning, and generic trademarks never merit any protection.
A descriptive trademark is one that immediately communicates to the consumer a particular quality or property of the goods or services in connection with which it is being used.
For example, BACITRACIN + for use in connection with ointments containing bacitracin antibiotic. Or VITAMIN WATER for use in connection with water infused with vitamins. (see June 9, 2004 Office Action issued by the U.S. Patent and Trademark Office in U.S. Trademark Application Serial No. 75/734,223). Descriptive trademarks can be protected only after you have invested hundreds or thousands of dollars and/or effort in marketing and sales and the marks have acquired secondary meaning; the way VITAMIN WATER has. So don't pick descriptive or generic marks.
Rather pick suggestive marks or inherently descriptive marks, i.e. fanciful (completely made up) or arbitrary marks that don't tell you anything about the goods or services in connection with which they are being used. Don't fall into the trap of picking a name that describes your goods, or properties or qualities of your goods or services, just because you don't have a lot of money to spend on advertising. Resist! It will be very difficult for any attorney to protect you and your trademarks if you don't.
The question of whether a consumer will become confused by the trademark you pick is a legal one. Only a judge or jury can decide that question.
Pick a mark that somehow captures your unique value proposition. Not easy to do but worth all the effort. Remember, this is going to become your brand.
Trademark Laws and Their BenefitsTrademark Laws are all about the consumer; YES, the consumer. Trademark Laws are not about you or about your company. The fact that Trademark Laws can be used to stop folks from copying or stealing your trademark is nice; but only an afterthought. It is not the primary goal of Trademark Laws.
Trademark Laws were implemented to prevent consumer confusion. They have been designed to make sure that when your targeted consumers see your trademark on your goods or in connection with your services, they do not make a decision to purchase your goods or services just because they believe that your goods and services are affiliated with another company who has a similar trademark. When seeing your trademark, consumers cannot be confused into thinking that your goods or services originate with another older company, or affiliated with another older company, or sponsored by another company, and into making a purchasing decision on the basis of that confusion.
A good trademark attorney's opinion as to whether a trademark is good or bad is money well spent. Are you confused? Maybe this example might clear things up. You decide you will sell sneakers. And you decide that you want to use a checkmark as your logo for these sneakers. The consumers see the sneakers with the checkmark, they get confused that the checkmark is the Nike(R) "Swoosh", and they decide to buy the sneakers because they think that they are buying Nike(R) sneakers, instead of your company's sneakers. Well, that is not good, and rest assured Nike will come after you one way or another.
Why Do I Need a Trademark Attorney?The only way that you can pick a trademark that will more likely than not, avoid consumer confusion and more likely than not, preempt the possibility of getting a cease and desist letter from Nike(R), or Adidas(R) or anyone else for that matter, is to get a trademark search done AND have a trademark attorney evaluate the trademark search results. Just getting a trademark search done is not enough. Just like only searching the United States Trademark Office is not enough. Just like searching registered trademark data bases in the United States is not enough; end of story, period, no matter what information you read in other sites.
The question of whether a consumer will become confused by the trademark you pick is a legal one. Only a judge or jury can decide that question. And only a real, honest to goodness trademark attorney with years of experience can offer an opinion as to whether a trademark is confusingly similar to another trademark by applying both his or her knowledge and his or her experience to the evaluation of the trademark search results. It takes quite a bit of time to do so because not only does the attorney need to look at each and every result the trademark search generates to determine which result is relevant and possibly material, and which is not, but then has to apply at least 8 to 13 factors to the relevant results to decide whether a likelihood of confusion exists.
Is a proper trademark search and an opinion letter a worthwhile investment? You bet it is. "An ounce of prevention is worth a pound of cure." A good trademark attorney's opinion as to whether a trademark is good or bad is that "ounce of prevention."
Let's put it another way. Let's just say that you decide that you do not want to spend the money for the attorney currently but instead want to spend the money on logos and advertising and signage and a website to promote your products using a particular potential trademark. The big day comes and you launch your business and THEN you get a letter from NIKE or another retail giant and they think that your mark is confusing or may dilute their mark. You will then be faced with the prospect of fighting a corporate giant and starting over after having spent enormous sums of money. An opinion from a trademark attorney will cost less in the short term and MUCH less in the long run compared to the expense of printing logos and barcodes and paying for a website and buying signage etc.