May 14, 2024

A trademark can be one of the most important assets your business ever owns. A strong trademark sets your business apart from the pack and distinguishes you from the competition. But, if you’re not careful, a poorly considered or lackluster trademark can land you in legal trouble or hinder your marketing and branding efforts. Let’s look at ways to select a strong trademark.

Good Defense Against Bad Trademarks

In the trademark world, there are certain words or phrases that are not well suited for registrations. For example, you cannot register a surname as a trademark. Therefore, “Rodriguez Real Estate” would not be a good mark because Rodriguez is a surname and Real Estate is descriptive. In order to be able to use a surname, it must have a second meaning in order to be protected.

Also, you cannot trademark words or phrases that are confusing to consumers. The United States Patent and Trademark Office (USPTO) states that, “[i]f your trademark is confusingly similar to another trademark and the goods and services are related, consumers are likely to mistakenly believe these goods or services come from the same source.” The USPTO is likely to refuse a trademark application for a confusing mark.

Other terms that you should avoid include purely descriptive words that describe the quality or nature of your goods and services. For example, “Fun and Happy Clown Services” or “Denver Swimming Pools” would likely be refused by the USPTO for being generic or relying on geographical words. Like surnames, a geographical term must have a secondary meaning to be protected. Similarly, the Lanham Act prohibits generic terms from being registered as trademarks.

Finally, there are acronyms and numbers that have found trademark fame, such as “ABC”, “KFC”, “MTV” and “IBM”. However, it takes a lot of money to get to this level. Therefore, it’s generally advisable to not use three letter acronyms.

A Good Playbook for Your Trademark

This is where you get to shine! A good trademark is unique, distinct, and inventive. A good trademark let’s you be you and brings your brand to the world.

When developing your trademark, be bold and feel free to create your own words not found in any dictionary. For example, think: Pepsi, Exxon, Kodak, Spandex. These words were invented or imaginary, but now they have taken on a specific meaning and we now associate them with specific goods or services. The United State Patent and Trademark Office (USPTO) finds these to be acceptable trademarks because they are fanciful in nature.

Similarly, using a plant or animal name can set your mark apart as “arbitrary” in nature and therefore not likely to be confused with other marks. For example, apple for computers or sun for computer technology.

Then, there are suggestive marks, which are not as strong as fanciful or arbitrary marks but may still be acceptable. Suggestive marks do just that. As the USPTO explains, “suggest some quality of the goods or services, but don’t state that quality of the goods or services outright.” For example, jaguar for a fast car or Airbus for an airplane.

Next Steps

You can learn more about strong trademarks from the USPTO. If you want to consult about your trademark ideas, schedule a consultation with MJ Vuinovich at (928) 233-6800 or reception@flaglawgroup.com. Se habla Español.

 

The information provided in this blog post does not, and is not intended to, constitute legal advice; instead, all information, content, and materials are for general informational purposes only.  Information in this blog post may not constitute the most up-to-date legal or other information.  This blog post contains links to other third-party websites.  Such links are only for the convenience of the reader, user or browser; Flagstaff Law Group, PLLC, and its members do not recommend or endorse the contents of the third-party sites.