How to Choose a Trademark

The most important things to know when selecting a trademark are a) choose an inherently distinctive mark, and b) conduct a trademark search before using the mark.

People starting a business and marketing experts brainstorm long and hard when selecting a trademark. There is no magic way to come up with an effective trademark or to know how the marketplace will receive a company name or mark. However, there are several core concepts to be aware of when selecting a company name or trademark.

Keep it Short and Sweet

Think about the world’s most well known trademarks such as MCDONALD’S, GOOGLE, AMAZON, VISA etc… One thing they all have in common is they are usually less than three syllables, ten letters and easy to pronounce. When brainstorming company names or possible trademarks for products, keep in mind that the most successful trademarks are relatively short. Consumers are more likely to remember shorter trademarks and names and return to those brands.

Avoid Generic or Descriptive Trademarks

In trademark law, only trademarks that are “inherently distinctive” automatically receive common law trademark rights and can be registered with the United States Patent and Trademark Office (USPTO). Therefore, it is important to select a distinctive trademark to prevent others from using the same or a similar name.

The trademark classifications get more distinctive from left to right

So what is an inherently distinctive trademark? Distinctive trademarks are any mark that is not generic or descriptive. For example, PAPER COMPANY is a generic trademark for a paper company and TASTY DONUT SHOP is a descriptive trademark for a donut shop (tasty is descriptive of donuts).

Inherently distinctive trademarks are suggestive, arbitrary or fanciful. When coming up with and selecting a company name or trademark, businesses should select a distinctive trademark because they will automatically receive common law protection and can be registered with the USPTO immediately. Additionally, the more distinctive a trademark is, the more assertive the trademark owner can be when enforcing their trademark rights.  

Examples of trademarks at each level of distinctiveness and the protection they receive

Learn more about trademark distinctiveness at our full blog post on the topic.

Conduct a Trademark Clearance Search

A common mistake businesses make is choosing a company name or adopting a trademark before performing a trademark clearance search. Trademark searches are important because if a business uses a mark that is already in use, they open themselves up to a trademark infringement lawsuit. A lawsuit could be the death of a small business.

In addition to opening up itself to a lawsuit for trademark infringement, a business that uses a trademark before conducting a trademark search, may not be able to get a trademark registration. This can be especially problematic when a company cannot get a trademark registration for their company name.

For more details about the importance of a trademark search, view our full blog on the subject.

Create of List of Possible Trademarks

Companies often are ready to go full steam ahead with a new product and marketing plan but have to change on the fly because the trademark was not cleared for use. The delay in choosing a new mark can lead to a loss in business and is avoidable. Businesses should create a list of alternative trademarks in case the trademark search shows that the company could be liable for trademark infringement.

Additionally, it is important that people within a company do not get too attached to a trademark before conducting a trademark search. Companies often get in trouble when they become emotionally attached to a trademark before doing a trademark search because they move forward with the mark when they know it can cause a potential issue in the future.

Do you have any questions about choosing a company name or trademark? Feel free to contact us today. We can do our best to help from a trademark perspective, however, the creativity is up to you!

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