How To Choose A Strong Trademark, Part I

26 07 2011

If you choose a weak trademark, or one that is ineligible for trademark protection, your competitors may be able to use similar marks, making it more difficult for your customers to identify your business, product, or service. Having a strong trademark makes it less likely that you will be forced into costly litigation over trademark rights later on, and more likely that any dispute that arises will be resolved in your favor. Therefore, it is important for you to understand a few very basic things about trademark law.

Maximum protection for your trademark will be achieved if you select a highly distinctive, strong trademark without any descriptive, surname or geographic connotations. Such a trademark will be registered in the Patent and Trademark Office and in foreign countries with little difficulty, and will have maximum protection under trademark law.

Some words cannot be protected by trademark law because they are not distinctive: Some types of words are excluded from trademark protection because they are not distinctive. Some examples include generic names. A generic name may be a common dictionary term (if you make computers and you plan to call your product “Computer,” you would be using a generic name to describe your product), or it may be a former trademark that has become a common name for a product. These terms are viewed by the public as descriptors of the product itself, not of the source of the product, so you cannot reserve exclusive use of these words.

Sometimes, a non-distinctive mark may acquire distinctiveness through secondary meaning: Sometimes, a nondistinctive word such as a descriptive term, a geographic term, or a name may become eligible for protection where it becomes distinctive through long time use. This type of distinctiveness arises where your use of the mark creates a secondary meaning in the minds of consumers, who associate the mark with your product or service despite its basic weakness as a mark. Secondary meaning may take substantial time and money to develop, and may be difficult and expensive to prove in court. Therefore, you should choose a mark that is distinctive on its own, not one that requires secondary meaning.

The strongest marks are those that are inherently distinctive. Some marks are inherently distinctive, so that you don’t have to prove secondary meaning in order to achieve protection. These marks are the strongest, and they fall into three categories: Suggestive terms, Arbitrary terms, and Fanciful terms. To achieve maximum trademark protection, your mark should be suggestive, arbitrary, or fanciful. In my next post, we will look at these three types of trademarks in more detail.

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