What is a Trademark?
A trademark is a word, phrase, symbol, or design (or a combination of these elements) that is used to identify the source of a product (“goods” in trademark speak). A service mark is the same thing, but instead it identifies the source of services rather than products. We will refer to trademarks and service marks collectively as “marks” below.
The Federal Government allows registration of marks to protect consumers. That is, from the Government’s perspective, having a clear public record of who own’s a mark makes it so that multiple vendors cannot just copy the name of a successful product to “trick” consumers into purchasing something they did not intend. Thus, while the registration of marks is intended primarily to serve the public interest, marks also are very valuable assets to their owners, as they allow the owner to prohibit others from using the name to cause confusion and take away market share.
Picking a Trademark
So how do you pick a good mark for your product or service? Well, let’s define what we mean by good. First, it should be a mark that is likely to meet the requirements of the U.S. Patent and Trademark Office (USPTO) for registration on the principal register. Second, it should be a “strong” mark that is distinctive, rather than descriptive, of your product. Let’s drill down on both of these in turn.
As to the USPTO requirements for registration, the primary test the USPTO looks at is whether the mark is likely to be confused with another existing mark. Remember, the USPTO is trying to make sure that your use of a mark for your product/service is not going to be confused with someone else’s mark. Otherwise, consumers will not be sure who they are buying from. Basically, the USPTO determines that a likelihood of confusion exists when (1) your mark is similar (whether in sound, appearance, meaning, or commercial impression) to another mark, and (2) the goods/services associated with the two marks are related enough that consumers mistakenly think they come from the same source.
So how can you know if there is a likelihood of confusion when picking a mark? The best way is to hire a skilled trademark attorney to perform a search and let you know if there are other marks out there already that might cause problems from the USPTO’s perspective.
As for picking a “strong” mark, marks that are “arbitrary” (e.g., BELMICO for “insurance services”) or “fanciful” (e.g., BANANA for “tires”) with respect to the goods or services will be the strongest marks. Why? Because they are creative and unusual, and are accordingly more likely to be remembered by consumers (and less likely to be in use by others). On the flip side, “weak” marks tend to be those that are merely descriptive of the goods or services (e.g., WORLD’S BEST BAGELS for “bagels”).