How do I select a strong trademark?

It is vitally important that you select or create a trademark that is both federally registrable and legally protectable.

Avoid trademarks that are likely to be confused with similar trademark. Essentially, a “likelihood of confusion” exists when 1) the marks of the parties are similar and 2) the goods and services of the parties are related in such a way that consumers are likely to believe they come from the same source. That is, the marks look alike, sound alike, have similar meanings, or create similar overall commercial impressions. The goods and services are also identical or are related in such a way that consumers would be likely to assume that only one company provides all of the goods and services when, in fact, the goods and services come from more than one source. Identical marks may be registered if used on goods and services that are not related, unless the mark is famous.

When you are selecting a trademark for your business, be careful not to select one that causes a likelihood of confusion with another mark. Your application will be rejected by the USPTO and you could open yourself up to an infringement lawsuit by the owner of the other mark. Instead, it’s safer to do a search for similar marks that are used on related goods and services before filing. This is called a “clearance search” and involves searching federal and state trademark registration databases. It also involves a search for common-law unregistered trademarks by searching the Internet for websites and articles involving similar marks being used for goods and services related to yours.

Descriptive terms are warmer than generic terms, but are still very hard to protect. Descriptive terms directly tell you something about the goods and services and generally are not registrable without showing that a mark has, through long use, become a source identifier. Think “CREAMY” for “yogurt” or “THE ULTIMATE BIKE RACK” for “a bicycle rack.” These words merely describe a feature or quality of the goods and services. Descriptive marks are harder to register and protect because they merely provide information about the goods and services. They don’t “identify the source” of goods and services and “distinguish the source” of the goods and services from others.

Suggestive trademarks “suggest” qualities or characteristics of the goods and services, without actually describing them. Think “QUICK N’ NEAT” for “pie crust” or “GLANCE-A-DAY” for “calendars.” Suggestive marks are registrable and are the next best thing to the hottest and strongest types of marks: “fanciful” marks and “arbitrary” marks.

“Fanciful” and “arbitrary” marks are the easiest types of marks to protect because they are inherently distinctive and immediately function as source identifiers. They are typically creative or unusual, so it is less likely that other parties are using them for related goods and services. “Fanciful” marks are invented words with no dictionary or other known meaning. For example, “BELMICO” for “insurance services.”

“Arbitrary” marks are actual words with a known meaning, but words that have no association or relationship with the identified goods and services. For example, “BANANA” for “tires.”

Choosing a fanciful or arbitrary mark is a great way to help consumers identify the source of your goods and services and distinguish them from the goods and services of others. These kinds of marks are immediately protectable.

Be aware, however, that warm and hot marks can cool over time. Without proper policing, a strong mark can become weak, even generic.