If you are
thinking about starting up a new business or introducing a new product or
service to the market, one of the last things you may have considered is
seeking trademark protection for the name of your business, product or service.
However, the importance of selecting a trademark cannot be emphasized enough.
Often times the trademark you choose will play a role in shaping the consumer's
first impression of the product or service offered by your company. This
article will discuss some of the important issues associated with choosing a
trademark for your business, product or service.
What is a
Trademark? A trademark can be any word, name, symbol, or device,
used, or intended to be used, in commerce to identify and distinguish the goods
of one manufacturer or seller from goods manufactured or sold by others, and to
indicate the source of the goods. Likewise, a service mark can be any word,
name, symbol, or device, used, or intended to be used, in commerce, to identify
and distinguish the services of one provider from services provided by others,
and to indicate the source of the services. However, it should be noted that it
is not important for a consumer of a product to know the name of the company
that manufactured the product, only that the product can be distinguished from
the products of other companies.
Choosing a Trademark
A. Avoid Likelihood of Confusion There are a couple of
major issues that should be considered when choosing a trademark. First, it is
crucial to determine whether or not another entity is already using a trademark
that is the same or similar to your proposed trademark in connection with
related products or services. This is commonly referred to as the "likelihood
of confusion" issue. Likelihood of confusion is the basic test that is used to
determine trademark infringement. Under this test, the question to be answered
is whether the average purchaser of a product or service would be confused or
deceived as to the source of the product or service. It is important to note
that the "likelihood of confusion" issue is evaluated with regards to the
specific product or service that the trademark identifies. Thus it is possible
to have identical trademarks associated with totally unrelated goods or
services, such as "EQUAL" for synthetic sweetener and "EQUAL" for a synthetic
resinous material for balancing tires.
B. Make Your Mark
Distinctive A second important issue that should be considered is
the distinctiveness of your proposed trademark in relation to the goods or
services. Trademarks can generally be classified in four categories: generic,
descriptive, suggestive, and arbitrary/fanciful. Typically, the strength of a
trademark is related to the category in which it falls. For example, arbitrary
or fanciful trademarks are very strong, while a trademark that is generic
receives no protection.
As its name suggests, a generic term is the
common name associated with a type of product and therefore can never receive
trademark protection. The policy behind this is that every competitor should be
able to describe his goods as what they actually are. Some examples of terms
that were found generic include "SUPER GLUE" for strong-bonding, rapid-setting
glue and "SURGICENTER" for surgical centers.
Descriptive marks
literally describe the product or service. A test that is often used to
determine descriptiveness is whether the mark immediately conveys an idea of
the ingredients, qualities or characteristics of the goods. Descriptive marks
are generally not registrable with the USPTO unless the applicant can show that
consumers have learned to associate the mark with a single source, which is
known as "secondary meaning" in legal terms. Examples of marks found to be
descriptive are "HONEYBAKED" for hams, "TRIM" for manicuring implements, and
"ICE" for beer.
A suggestive mark is similar to a descriptive mark,
but does not literally describe the product or service. Suggestive marks
require some analysis, imagination, thought and perception to determine the
nature of the goods or services. Moreover, suggestive marks do not require a
showing of secondary meaning to receive protection. Some examples of suggestive
marks are "GREYHOUND" for bus services, "JAGUAR" for automobiles, and
"COPPERTONE" for suntan lotions.
Finally, arbitrary and fanciful marks
are very strong and typically receive a great deal of protection. Arbitrary
marks are common words that are applied in an unfamiliar context, such as
"APPLE" for computers, "CAMEL" for cigarettes, and "ORACLE" for software. On
the other hand, fanciful marks are coined (made-up) terms that do not have a
dictionary meaning, such as "KODAK" for film, "LEXUS" for automobiles, "ROLEX"
for watches, and "XEROX" for copiers.
Conclusion
Before expending large amounts of time and money on advertising and
marketing for a new product or service, a business should consider the points
set out above. As to the likelihood of confusion issue, a comprehensive
trademark search should be performed to determine whether another entity is
already using a mark similar to the proposed mark in association with similar
or related goods. When choosing a trademark, the distinctiveness of the mark
should be a major consideration. From a purely legal perspective, it is best to
choose a mark that is arbitrary or fanciful. If at all possible, businesses
should stay away from trademarks that are descriptive of their goods or
services, since descriptive marks are more difficult to register and protect.
DISCLAIMER We hope you understand that we cannot
possibly give accurate legal advice in a brief article. Accordingly, nothing in
the above is intended as specific legal advice to any person. Such legal advice
can only be given by a qualified practitioner after a careful review of all the
individual facts. We urge you to consult us, or another licensed professional,
before you proceed.
ABOUT THE AUTHOR David Dawsey is an
intellectual property attorney with the law firm of Gallagher and Dawsey Co.
LPA. David also operates TheTrademarkFirm.com, which is the online portal for
trademark searches and applications. Please visit
http://www.TheTrademarkFirm.com.
