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How to Select a Trademark

I spend a bunch of time each week advising clients how they can choose a trademark that will serve them well.

There are two main goals. First, is offensive. Well, it’s going on the offense. You want to make sure the mark serves your marketing goals. The mark needs to be memorable and will help your brand stand apart from your competitors; it should make your sales and marketing folks’ job as easy as possible. You also want to make sure you can grab as much brand “real estate” as possible with your mark, so it needs to be legally strong.

The second goal is defensive. A trademark owner doesn’t want to walk into a trademark infringement lawsuit that could be avoided by selecting a different mark. That’s an expensive setback that could result in having to hire litigators and abandon the newly-launched brand.

Here’s a checklist for your mark that will help achieve these goals.

  • It’s memorable. I’m not an expert on this one. That’s more for marketing experts. But a brand that consumers can remember is half the battle. Think of the hundreds of different wine producers a customer comes across in a grocery store. There are dozens of “Chateau,” “Domaine,” “Villa,” “Valley,” “River” and “Cellar” brands. There also are brands that stand out: Stag’s Leap; Onyx; Fat Bastard; Turning Leaf. Trademarks are used to help consumers make a repeat purchase. It pays to help the consumer help you by choosing a brand they can remember. I’ve spent many a frustrating trip to the wine store trying to remember that bottle I liked a few weeks ago. Do a guy like me a favor and make your name, color scheme, and/or logo stand out. 
  • It’s protectable. A protectable trademark starts with one that’s not generic. WINE brand vino can’t serve to distinguish your wine from your competitors because you’re all selling wine. For that reason, generic marks — words that denote the thing being sold — aren’t protectable. Anyone can use them.

    One rung up the protectability ladder are descriptive trademarks. They’re not protectable until longtime use (usually more than five years), lots of money spent on advertising, or big-time sales subvert the primary meaning — the description — to the “secondary” meaning — that the goods or services come from a particular source. Descriptive trademarks aren’t protectable until they achieve that secondary meaning. That means competitors can freely copy your new mark without liability during the often long ramp-up period toward gaining secondary meaning. Another problem with descriptive marks is even after your mark has become protectable, that doesn’t erase the word from the English language. Competitors can still use a descriptive mark to describe their product; they just can’t use it as a brand. So if you’re the Crispy Cracker Company, your competitors can still tell consumers their crackers are crispy (assuming that’s an accurate statement).

    To avoid such a competitive disadvantage, select a mark that’s immediately protectable: one that’s suggestive, arbitrary, or fanciful. A suggestive mark doesn’t convey any immediate information about the good or service, like CHICKEN OF THE SEA. It requires the consumer to use a little imagination before figuring out the message being sent (“Ok, chicken don’t live in the sea, so what’s being sold is a fish the seller’s saying is like chicken — inexpensive, tasty, and healthy. I get it: tuna.”). An arbitrary mark is a familiar word used in an unfamiliar setting, like APPLE as a brand for computers. A fanciful mark is a “coined” or made-up word like EXXON or POLAROID. It’s considered the strongest type of trademark because its only meaning is as an indicator of source.

    One last consideration in determining a mark’s protectability. Courts give strong marks more protection that weak marks. So if you’re EXXON and you’re suing a new gas station with the name EXXXON, the court will give you wide berth because the only rational reason your competitor chose a mark so close to your was to profit from consumer confusion. Not so if there are a bunch of other producers in your industry with brands similar to yours (think “Chateau,” “Domaine,” and “Valley” for wine). Marks in a “crowded field” get limited rights because courts assume consumers have gotten used to distinguishing between producers with common names. 
  • It’s marketable. This means the mark isn’t already taken by someone else. The domain name is available. (And by all means, register the domain name before applying to register the trademark. You don’t want to make it any easier for cybersquatters than you have to!) The mark should be registrable, meaning it’s not barred by one of the “Section 2” bars, the most common of which are it’s likely to cause confusion with a prior registrant’s or applicant’s mark, and it’s merely descriptive. The mark also isn’t primarily a surname; it’s not functional; it’s not deceptively misdescriptive; it’s not immoral or scandalous; and it serves as a brand rather than as a decoration. There are other bars, but those cover most of them.
  • It doesn’t step on anyone else’s rights. This one’s a biggie. A mark that’s likely to confuse consumers will prevent the mark from being registered; it is grounds for a registration to be cancelled; and the later-adopter is susceptible to being sued for trademark infringement and to being ordered by the court to stop using the mark. Not a good place to be. So how does one avoid this trap? By searching for prior uses. Start with TESS, the Patent and Trademark Office’s database. But don’t stop there. Hit Google and analyze at least 25 screens looking for third party use. And remember you’re not just looking for direct hits, i.e., identical uses of the mark. You need to look for “confusingly similar” uses as well (meaning look-alikes, sound-alikes, and synonyms). That gets tricky, which is why trademark searches can get complicated. If you’re about to invest big bucks in your brand, trademark clearance can be a high-stakes endeavor. One last thing. You need to stay far away from famous marks even if your use wouldn’t be likely to confuse anyone. That means MICROSOFT is a bad brand to market your used-car lot. You could expect to hear from the folks in Redmond — with good reason. That use is called “dilutive” use. It waters down their famous brand. That means you need to steer clear of nationally-known brands when adopting your own.

So is that all? Nope. There are other plenty of other pitfalls. But mostly they are subsets of what I’ve described above. I’d recommend you do as much due diligence as you can, and then pass the baton to a trademark attorney. (Spoken like a trademark attorney, I know.) But why take on all the risk yourself? Let an experienced professional sweat the details, identify the risks, and plot a strategy that will maximize your chance of selecting a mark that will accomplish your business goals.

Posted on August 21, 2011 by Registered CommenterMichael Atkins in | CommentsPost a Comment

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