How to Choose a Trademark
Because trademarks show up everywhere and influence peoples' opinions on a daily basis, selecting the right one is of the utmost importance. Keep these important guidelines in mind.
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Instructions
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What You Should Know About Trademarks
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1
Know what qualifies as a trademark or service mark: A trademark is any name, symbol or slogan that is used to distinguish a particular product or service from others in the marketplace and/or identify the source of a particular product or service (the company that makes or provides it). Business names, logos, packages, domain names and distinctive product designs can all qualify as trademarks.
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2
Know who can qualify as the owner of a trademark: The owner of a trademark is the person or company that commercially uses the trademark first or applies to federally register it first (provided that the mark is later put into actual commercial use and the registration process is completed). The owner of a trademark has the right to prevent others from using the same or a similar mark in a way that is likely to confuse customers about the source of the underlying product or service.
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3
Know what types of trademarks qualify for maximum legal protection (called "distinctive' or 'strong' trademarks): Unique logos or symbols such as the Pillsbury doughboy; made-up words such as Exxon or Kodak; fanciful marks or words that invoke imaginative images such as Double Rainbow Ice Cream; arbitrary marks that are surprising in the context in which they're used, such as Time Magazine or Fossil Watches; and marks that suggest but don't outright describe a product's qualities, such as Netscape Navigator (web browser) or Windbender (lightweight jacket).
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4
Know what types of trademarks are unlikely to qualify for legal protection (called 'weak' trademarks): Ordinary names such as Pete's Muffins or Smith Graphics; geographic terms such as Northern Dairy; and descriptive terms that literally describe a product or its qualities, such as Rapid Computers or Ice Cold Ice Cream.
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5
Know what types of marks don't qualify for federal trademark registration. See "How to File for Trademark Registration" for specific information.
Choose a Trademark
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6
Make a list of proposed trademarks that suit your business or the product or service it will provide, observing the rules above.
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7
Before you proceed any further, find out which of your proposed trademarks are already in use by someone else. See "How to Conduct a Trademark Search."
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8
If the same or a similar trademark is already in use, make sure you wouldn't be using your proposed trademark in a way that could lead to customer confusion. See "How to Conduct a Trademark Search." If your use of a proposed trademark would create customer confusion, or if it's the same or very similar to a famous trademark, delete it from your list.
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9
Choose between the proposed trademarks that remain on your list. Repeat Steps 1 through 3 above.
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Tips & Warnings
Be creative and original. Make sure your proposed trademarks will do a good job marketing your company or your products and services. Keep a large list of options open.
Be sure your trademark won't restrict your company's ability to grow or go online. For instance, ask yourself if your proposed business name will still be appropriate if your business opens a second location, decides to sell a new line of products or wants to operate a website with the trademark as part of its domain name.
Before you finally commit to a trademark, get some feedback from potential customers, suppliers and others in your support network. They may come up with a downside to a potential name or suggest an improvement you haven't thought of.
Weak trademarks may become strong trademarks if they gain wide public recognition and acquire what's called a "secondary meaning," in which case they become distinctive and gain legal protection. Examples include Sears, Ben and Jerry's, and Park N Fly.
Don't choose a trademark that is the same or very similar to an existing famous mark. The owner of a famous trademark may stop another company from using the famous trademark, even if customers aren't likely to be confused between the products of the two companies, if the other company's use of the trademark would disparage the trademarks' reputation for quality or diminish its distinctiveness.
Choosing a bullet-proof trademark is not a simple task in today's Internet economy. This short checklist suggests a course of action, but to ensure you'll end up with a trouble-free trademark, you should to educate yourself further about the ins and outs of trademarks by reading self-help materials.
This information is not intended as a substitute for personalized advice from a knowledgeable trademark lawyer licensed to practice law in your state. For specific, up-to-date advice geared to your specific situation, consult an expert.
