What's in a Name? - Tips for Choosing Strong Trademarks

By: Mallory Henninger

Marketing teams and legal teams are often at odds during the brand name or logo development process.  Marketing teams want to use marks that readily identify their products to consumers, while attorneys often believe these marks to be too common or descriptive. Striking the right balance can be a frustrating process.

A trademark can be any word, phrase, symbol, and/or design that identifies your goods or services and distinguishes them from your competitors.  Some common examples of trademarks include brand names, slogans, and logos.  A trademark is essentially a company’s way of standing out in a crowd, and is a very important business asset.

While there are many types of trademarks, not all words, phrases, symbols, and designs qualify for federal registration as a trademark.  Federal registration with the United States Patent and Trademark Office (USPTO) offers benefits such as protecting the trademark from competitors, ensuring ownership rights in the mark, and making it easier to enforce rights against infringers.  The process of selecting a strong, registerable mark can be simplified by considering these guidelines.

Avoid terms that are common in your industry.

Words that describe features of the product or service marketed tend to be weak marks and difficult to register.  Descriptive words are often terms that have acquired independent meaning in a particular industry.  For example, the term PODCAST has been denied registration by the USPTO because “the mark immediately describes and names the characteristics and features of the goods.” Similarly, the term BRICK has been denied registration for toy building blocks.    

While marks that are descriptive in respect to products or services marketed thereunder should be avoided, brands that use a common term but in an unrelated industry often make very strong marks.  For example, APPLE functions as a trademark in the computer sector, but would not be accepted as a brand name a fruit.  Arbitrary use of a common word for entirely unrelated goods/services can result in a very distinct and memorable mark.

Don’t be generic.  

Marketers may consider it a sign of success when brands become recognized such that they become part of everyday speak.  However, brand owners should avoid using their brand names as nouns or verbs to prevent their marks from becoming generic.  A generic mark is a term that has become synonymous with a class of products or services due to its popularity and significance.  The term THERMOS, for example, has been deemed generic for vacuum-sealed beverage containers.  Genericism renders a mark ineligible for registration, and is grounds for cancellation of registered marks.  Other marks that are fighting the battle against genericism include GOOGLE and KLEENEX.      

Ditch the three-letter acronyms and numbers.

While brands such as IBM and CVS may be instantly recognizable, three-letter acronyms are intrinsically difficult to remember.  The three-letter acronyms that are famous have become so due to market longevity and extensive advertising expenditures. Even poor trademarks can be successful if you back them with enough money.  Additionally, there are a limited number of three-letter acronyms available, so there is a good chance that your acronym is already taken or will be confused with someone else’s.  Numbers are also difficult to remember and should be avoided. 

Create something new, but do so carefully.

It is often tempting to combine two words to form a brand name. Doing so may result in a new word that is a highly distinctive brand name.  Some of the most famous trademarks are neologisms. MICROSOFT, for example, is a combination of “microcomputer” and “software.”  However, creation of a new word is no guarantee that it can be registered as a trademark, particularly if it is clearly a combination of descriptive and/or generic terms.  It is also best to avoid obvious combinations or rearrangements of competitor brand names. Such marks not only poke the bear, but are likely confusing and nonmemorable.  While care should be exercised in inventing a new word, newly created words that are registerable tend to be very strong and distinct marks. 

Investigate the meaning of the mark.

Word marks may have vulgar or offensive meanings in other languages. For example, in 1973, Mitsubishi made the unfortunate decision to name its new SUV the "Pajero," which translates in Spanish to "wanker."  Be sure to consider the meaning of your mark in different languages, particularly for your target geographic and demographic segments.

Consider adding a graphic.

Adding a graphic element to an otherwise descriptive name can make a mark registerable.  However, the added graphic must be non-descriptive and add something extra to the mark.  For example, adding a picture of an apple to the word APPLE would not make a mark distinctive for fruit.  However, adding unrelated symbols or complex shapes may make the mark distinct.  When considering adding a graphic to a mark, it is important to note that resulting trademark will cover only the mark in its entirety, and does not protect the individual elements. You will never be able to prevent from selling apples and calling them apples.  

Be creative, not confusing.

Trademarks cannot be registered if they are confusingly similar to marks previously registered for similar goods/services.  While it may be easy to seek inspiration from the marks of competitors, it is essential to avoid marks that are similar.  Choosing a unique mark will not only enhance registrability, but will also distinguish your products in the marketplace. 

Clear your mark prior to launch.

While assessing the strength and distinctiveness of a mark can be a subjective process, the above guidelines can be useful in determining the feasibility of registration. Check the availability of your mark early in the business or product development process.  Clearing your mark prior to business entry or product launch can avoid severe pitfalls.  Discovering potential availability or infringement issues early on can prevent costly and time-intensive rebranding.  Additionally, actual use of a mark is not required to begin the registration process; only an intent-to-use is needed.  Your brands are the livelihood of your business.  Protect those brands as early as possible.