Choosing a Trademark
In choosing a trademark, you should keep in mind the characteristics of a strong (and therefore easy to protect) trademark.
Most of the strongest, best-known brands are arbitrary or fanciful. An arbitrary or fanciful mark has many advantages: it is less likely that a search of pending and registered marks will turn up a conflict; the mark will be easier to protect from infringement; consumers will be less likely to confuse your mark with other marks; and competitors will be less likely to use a mark close to yours without infringing your mark.
Type |
Characteristics |
Examples |
Generic |
gives you no exclusive rights and cannot be registered at all, even on the Supplemental Register |
THE FOOD STORE supermarket |
Descriptive |
describes some aspect of the product, and cannot be registered on the Principal Register |
QUIK-PRINT printing BREATHE RIGHT nose strips COMPUTERLAND computer store
|
Suggestive |
merely suggests some aspect of the product, and can be registered on the Principal Register |
STRONGHOLD nails ROACH MOTEL insect traps PLAYSTATION video game console
|
Arbitrary |
has a common English meaning but is used in an unfamiliar way; does not describe or suggest the product in any way |
SHELL gasoline, CAMEL cigarettes ARROW shirts, APPLE computers |
Fanciful |
has no English meaning apart from the trademark |
EXXON, KODAK, XEROX, BUICK
|
Sales and marketing personnel often object to arbitrary or fanciful marks because such marks do not describe or suggest the product or service. The assumption is that a descriptive mark will be more easily understood by consumers and therefore make advertising more effective. But descriptive marks are inherently weaker and sometimes difficult to register and protect from infringement.
You should try to select an arbitrary or fanciful (or at least suggestive) mark and depend upon your own advertising and promotion to create brand awareness. If the marketing department wants to describe what the product or service is, then they should use slogans and “tag lines” that describe the product or service, such as “CHARMIN, the softest toilet paper.”
