What criteria should I use in selecting a trademark?
Selection of a trademark is driven by both strategic business and legal considerations. Three major considerations should be the mark’s acceptability, registrability, and strength.
Acceptability. First, it is important to understand what constitutes an acceptable mark. This varies from country to country. In the US, an acceptable mark may contain any of the following:
- Three-dimensional shapes; and
Registrability. The mark should be capable of registration and use in each target country. Ability to register and use in a country depends on a number of factors including:
- Whether conflicting or confusingly similar marks have already been used or registered;
- Whether the selected mark offends specific laws, such as prohibitions against registration of certain governmental emblems or symbols; and
- Whether the mark is generic or merely descriptive of the particular product or service (described below.)
Obviously, the mark should not have a negative connotation in any target country. Whether the corresponding domain name is available should also be considered.
Strength. Trademarks are typically classified under US law into five categories of “strength.” As a general matter, the strength determines whether protection is available. In addition, the stronger the mark, the easier to show infringement.
“Fanciful” marks are at the strongest end of the spectrum and are coined terms made up to designate products or services. TOOTSIE ROLL® is an example.
“Arbitrary” marks are next in strength. These are genuine words that have no particular connection to the designated goods or services. SUN LIFE®, for insurance services, and APPLE® computers are examples.
“Suggestive” marks are next in strength. These suggest, without directly describing, the goods they designate or a characteristic of those goods. Examples include MICROSOFT® (software), TIDE® (laundry detergent), or COPPERTONE® (tanning products). These three types of marks are considered “inherently distinctive.”
“Descriptive” terms are not marks, reside on the weaker end of the spectrum, and describe the goods and services, or a feature of them. The dividing line between “suggestive” and “descriptive” is often complex and hard-fought. Descriptive terms are not immediately registrable unless the user can establish the term has acquired distinctiveness to the consuming public (i.e., the mark has come to be known as designating a particular provider of goods or services).
Trade dress (such as product design, configuration, or packaging) is generally deemed to be descriptive, although in some cases, packaging can be inherently distinctive (unlike product configuration, which cannot).
“Generic” terms—at the lowest end of the “strength” spectrum—are entirely unprotectable. A term is “generic” if it is commonly used to designate the type or category of goods or services in question. “Aspirin” and “escalator” are examples of words that were not generic originally, but became so over time.
Other indicators of a mark’s strength can include its length of use, the amount of advertising and promotion, the sales made in connection with the mark, and how well the trademark owner has “policed” its mark by stopping infringers.
As you can see, the selection of a mark is a mixed issue of business and law. A trademark attorney should be consulted early in the selection process.
Learn more about our approach to trademark law and copyright infringement.