Guidelines for Choosing a Trademark
I’m often asked the question, “How do you choose a trademark?”
There are some specific rules on how to choose a good trademark. I’m not going to talk about the marketing aspect of whether a name inspires people to purchase your product or engage you for a service — I’ll leave that to the marketing professional. In answering the question, “How do you know what is a good trademark in terms of the law?” there are some pretty clear guidelines.
The first thing is, you can’t use somebody else’s trademark for the same type of business and services that you want to brand with your trademark. You can’t use a famous mark such as Coca-Cola® for anything. With those restrictions in mind, you are free to pick a trademark.
So how do you pick a new name? The whole idea of a brand is for a consumer to know the source of the goods and services in the marketplace. The best type of trademark to use is a distinctive word or logo that makes it easy for the consumer to know that this is your product or service and not somebody else’s. There are some guidelines, particularly if you’re interested in using your trademark in the national marketplace and registering it with the federal government through the US Patent and Trademark Office (USPTO).
There are three types of distinctive marks that the USPTO encourages people to use:
The first is a fanciful mark. The best examples of that are words like Exxon® or Häagen-Daz®. Those brand names are completely made-up words. You would never have guessed that Exxon® stood for a major petroleum company from the way the word is pronounced or spelled. Since Exxon® doesn’t mean anything in any language, it’s considered fanciful.
An arbitrary mark is when you take a common word and use it in a completely different type of product or service than its original dictionary meaning: for example Apple® computers. An apple is a real thing, but it has nothing to do with computing, especially before Steve Jobs started the company. Now, of course, Apple® is associated with well designed electronic products. Originally, an apple was just an apple. Another example is a word like salt. There is a clothing line called Salt®, but salt has nothing to do with clothing.
Suggestive marks are the third type of distinctive mark. A suggestive mark suggests what the product is, but doesn’t spell it out. A word like Blu-ray® suggests that there’s some sort of light going on, maybe even something in the blue spectrum, that allows a disc to be played. Another example is Coppertone®, which is suggestive of how your skin will look after you use the product (rather than lobster red). These are suggestive marks, and they’re all great trademarks that can be registered with the USPTO.
There is one other type of mark that can be registered, but it can’t be registered in what is called the Principal Register. (In a subsequent article I’ll explain the difference between the Principal Register and the Supplemental Register.) I’ve talked about the use of the word salt with clothing — but if you use the word salt with a food, that’s descriptive; if you were the Salty Snacks Company, that definitely would convey what type of snacks you were selling to people. A descriptive mark is not a great mark, because it’s not distinctive. However, if you’ve been using it for many, many years, and when people hear or see that trademark and they think of your product, then it’s called having secondary meaning. Only when people associate something with a descriptive word with your product — and not others in that class — you can then petition the Trademark Office to be listed in the Principal Register.
It’s very important when you are picking out your trademark, especially a word mark, to think about these different classifications and figure out which one your trademarks fall into.
Consult with a trademark attorney to make sure your trademark is available before you begin.
Patricia P. Werschulz
Werschulz Patent Law, LLC
23 North Avenue East
Cranford, NJ 07016