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The Importance of Proper Trademark Selection

by Cynthia B. Stevens

A company’s trademark, service mark and/or logo can be one of its most valuable business assets. Trademark selection is a vital first step to obtaining trademark protection. When choosing a trademark or service mark it is important to adopt a name that will be afforded trademark protection. A mark that is considered weak may not serve as a good identifier of source and as such would be entitled to only a narrow scope of protection. On the other hand, a strong mark which becomes identified in the minds of the consumers for a particular product or service such as APPLE® for computers or VERIZON® for wireless telephone service will be entitled to a much greater scope of protection. By helping our clients identify and select strong marks, we assist them in developing a single brand or a strong trademark portfolio that can become valuable business assets.
The United States Patent and Trademark Office (USPTO) and courts have classified marks into the following four categories: Arbitrary or Fanciful, Suggestive, Descriptive and Generic. When selecting a mark it is important to recognize that Arbitrary or Fanciful marks are considered the strongest marks and afforded the greatest scope of protection. Arbitrary marks are words or symbols that have no relation to the goods or services (such as YAHOO® for internet sites); and fanciful marks are coined terms that had no meaning before becoming a trademark (such as Polaroid® for cameras). If, you select an arbitrary or fanciful mark you will have a greater chance of clearing the mark, obtaining a trademark protection and preventing competitors from adopting a confusingly similar mark and trading on your goodwill.
Suggestive marks are next in terms of strength and, if cleared, will usually be accepted for registration by the USPTO and can also become a valuable business asset. Suggestive marks tend to indicate the nature or quality of the goods or services. Some imagination is required on the part of the consumer to identify the goods or services (such as GREYHOUND® for bus service or MUSTANG for a fast car). The line between an imaginative mark that cleverly suggests the nature of the products for which it is used and a mark that is “merely descriptive” of those products can be quite fine and sometimes difficult to determine. The issue of whether or not a mark is merely descriptive or suggestive is often raised by the United States Patent and Trademark. Again, we can help our clients select a mark that will be able to serve as an identifier of source and be registered by the USPTO.
A descriptive mark is one that merely describes or names a characteristic or quality of the goods or services which may not be registered on the Principal Register without showing it has acquired distinctiveness (such as FRUIT COOLER for fruit flavored beverages or COMPUTERLAND for computer stores). Importantly, generic “terms” are common words used in connection with the product or service (such as APPLE for apples or RESTAURANT for restaurant services, etc.).
Generic terms are never afforded trademark protection. Terms that are merely descriptive will usually not be deemed protectable marks because they are not capable of distinguishing one party’s goods or services from another. Nevertheless, many trademark owners are initially drawn to generic and/or descriptive terms. It is natural to want a name or mark to provide information about the nature of one’s business and its products and services. However, as mentioned above, whenever possible, trademark owners should take care to choose a strong mark that helps to create a strong brand that can become an effective business asset.