Small Business 101: Deciding Your Trademark

Small Business 101: Deciding Your Trademark by Pat Werschulz

One of the most critical decisions you must make in the early stages of your business is picking a trademark that will be effective and work well to promote your brand.  

How do you decide what your trademark is going to be?

The first step is to pick your brand name. You may have a logo, you may have a tagline, but you need to decide on the name of your product or service. You should consider that your trademark is distinctive, both from a legal point of view, and from a marketing point of view. You do not want your product or service to be confused with any others.

The U.S. Trademark Office provides some guidance on the type of names you should consider. There are three types of distinctive marks:

  1. The highest level of distinctiveness comes with fanciful marks. These are made-up words, like Exxon®, Kodak®, Haagen-Dazs®, etc. They have no meaning in any language, and your job as you develop your business is to bring recognition to these new words.
  2. The next type of trademark that is a little less distinctive is to take a word that has a real meaning, but turn it into something that is not related at all to that meaning. A good example is Apple® Computers. Apples are real objects, it is not a made-up word, but it has nothing to do with electronics. Allstate® Insurance has nothing to do with state governments, but it has become known as a distinctive mark for insurance. You could use a word like Salt for clothing, or something that has nothing to do with food.
  3. The least distinctive, but still a good choice, is a suggestive mark. It may be a word that has some relationship to the product or service, but does not exactly call it out. Some examples are Blu-ray® for laser disks, because the “ray” brings to mind light rays which are what lasers are made of, or Ivory Soap®, because ivory is so white and pure-looking that the term gives an idea of a distinctive type of soap.

The least preferred type of trademark, which you can still legally use, but can not register on the principal register of the Trademark Office, is a descriptive mark. If you have a food that tastes salty, you would not be able to register a trademark such as salty. Or, in one case, someone tried and failed to register the name Electronic with electronic goods, because it sounded too much like what they were. So a name that is just descriptive generally cannot be used on the principal register. If a part of your trademark is a regular descriptive word along with a made-up word, you may have to disclaim the descriptive word part, because you do not have the exclusive right to use a word that describes your product to the point that no one else who makes that same type of product can use it. 

You should think hard about what you are going to call your business before you get started and speak with a trademark lawyer for guidance before you start printing your first business card.

Contact me to get started today!

Patricia Werschulz

Patricia P. Werschulz

Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016
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