Tips for Selecting a Trademark
Before your entrepreneurial enthusiasm takes over and you rush to market with a trademark that merely describes the product or service you’re selling, take a breath. Your trademark may become your new business’s most valuable asset. So take the time up front to come up with a strong, protectable, and distinguishable trademark. Once you have brainstormed your initial list of candidates, here are a few things to keep in mind:
Is the trademark available? If the trademark is the same or similar to another trademark so that there is a likelihood of confusion, you will not likely get your trademark through the United States Patents and Trademarks Office (USPTO) and the many protections that a USPTO registration affords. A search of the USPTO search system will usually answer this question. You may also want to run a quick Google search to see if anyone is using it, even if not registered with the USPTO. If you are thinking about using the mark in a foreign country, you will want to check the availability of the mark in that country as well.
Is the trademark distinctive or does it merely describe your product. The most common pitfall new business owners encounter is choosing a trademark that merely describes the good or service they are providing. A trademark that is merely descriptive (e.g. Tree Cutters for arborist services) is not a strong trademark and will have a hard time getting through the USPTO. The strongest marks are those that are arbitrary (e.g. Apple for computers) or fanciful (e.g. PEPSI). Arbitrary and fanciful marks are automatically protectable. Descriptive marks may be protectable if you can show that the marks have acquired “secondary meaning”.
If you are using a Hawaiian work or a mark in foreign country, what does that mark mean? If you are considering the mark “Malani” for a floral perfume or lotion, you may want to pick up the Hawaiian dictionary first. It means “rancid”. Similarly, if you are thinking of “apesta” for pasta, you may want to avoid Spanish speaking markets because it means “stinks” in Spanish. Another consideration when using foreign language words is whether there are negative connotations in the English language.
Is the domain name available? Part and parcel with any new business venture is a strong online presence. It is generally a good idea that the principal trademark of your company be available to serve as the domain name, since so much marketing is done via the internet.
There are many marketing consultants, public relation firms and the like that can assist you with selecting a strong trademark. But with the above considerations in mind, I prefer the advice of long-standing intellectual property lawyer, Jeffrey Sheldon:
- Invite good friends to the bar for choosing a mark.
- Pay for the drinks.
- Have your friends brainstorm suitable marks.
- Stay sober (enough) to write down the suggested marks.