Whether it is for creating your new business name or for creating a name for a new line of goods or services, there are basic concepts one should consider before creating a trademark. Many people pay professional companies thousands of dollars for branding services. However, those professional companies use a few basic principles when creating a new trademark. Following the guidelines below when creating your business or product name will place you in the best position to have a strong and distinctive trademark that is more easily protected from infringers.
Certain words cannot be registered with the United States Trademark Office and as a result should be avoided if your goal is to have a strong or distinctive trademark that can be more easily protected from infringers. Marks that use words that describe either the product or a characteristic of the product are known as “descriptive” marks. One example of a descriptive mark is BED & BREAKFAST REGISTRY used for lodging reservations services. The words BED & BREAKFAST REGISTRY merely describe the services provided under the mark. As a result, such a mark would be difficult to register, protect and enforce. Descriptive words should be avoided in order to have a strong or distinctive mark.
Marks that use words that are fanciful (made up or coined) and have no meaning or relation to the goods being described are strong marks and more easily protected from infringers. One example of a fanciful mark is APPLE for computers. The word APPLE, a fruit, has no relation to a computer. As a result, such a mark is registerable and can be more easily enforced and protected. When creating a trademark for a product or service try to use fanciful or arbitrary words.
Using words that are primarily surnames should be avoided in order to have a strong trademark that is more easily protected. For example, consider the mark WOOLLEY’S PETITE SUITES used for hotels. Woolley is primarily a last name and therefore the mark WOOLLEY’S PETITE SUITES would be difficult to register. As a result, such a mark would be more difficult to protect against others. Avoid words that are primarily surnames.
Using words in a mark that will likely cause a consumer to confuse such a mark with another registered trademark will not be registerable and should be avoided. Several factors are taken into consideration when determining if marks are confusingly similar or create a “likelihood of confusion” with another mark. These factors include the following: the similarity between the marks; the relatedness of the goods or services; the trade channels in which the goods travel; the conditions under which the goods are sold and purchased, i.e., “impulse” vs. careful, sophisticated purchasing; and, the number and nature of similar marks in use on similar goods or services. The “likelihood of confusion” analysis should be done by an attorney and requires a trademark clearance search to determine what registered marks could affect a trademark’s ability to be distinctive, registerable and protectable.
Using words that are deceptive should be avoided in order to have a strong trademark that is more easily protected. For example, the mark SWISS MADE used for selling watches made in China might deceive consumers into believing that the watches were made in Switzerland and had the same quality of watches as watches made in Switzerland. Because such a mark might deceive consumers it would not be registerable and more difficult to protect.
Words that would cause purchasers to believe that goods or services sold under the mark originate in the geographic place identified in the mark would be primarily geographically descriptive and would be more difficult to protect. For example, the mark CAROLINA FURNITURE used for a furniture store is primarily geographically descriptive and difficult to register and protect against others because evidence would demonstrate that “Carolina” is used to indicate either the state of North Carolina or the state of South Carolina. Primarily Geographically Descriptive marks should be avoided.
In Summary, the guidelines above will assist you in creating a strong or distinctive trademark that is more easily protected from others. If you have any questions, the attorneys at The Plus IP Firm are experienced in advising clients and professionals who are creating and protecting brands. Click here to schedule a free consultation.
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