How to Choose a Good Trademark (Understanding Trademark Strength)

Applying for trademark registration with the USPTO costs time, energy, and money. And, like copyrights, you wouldn't apply for one without getting some basic understanding.

So, don't apply without understanding whether your mark meets the essential criteria for a registrable trademark. Let's explore the question of how to choose a good trademark, starting with the basics:

Getting started: Understanding trademarks

Your trademark identifies your company as the source of a good or service you provide and distinguishes your goods or services from those of other companies. So, after you've decided that a trademark is what you need, you'll need to ask yourself:

1. Does my mark identify a source?
2. And is it distinguishable?

Our recommendations: Work with a qualified attorney. When you're working with a trademark attorney, they can help you assess the eligibility of your mark before you spend any time or money on your application. Essentially, speaking to the professionals is the best way to ensure a strong trademark.

Determining likelihood of confusion

If there is a likelihood that your mark could be confused with another mark, it will get rejected.

Consider this example:

If you want to start a soda brand called Coco-Colo, your mark will likely be rejected because the Coca-Cola Corporation owns a registration for the beverage mark COCA-COLA®.

It doesn't have to match another mark exactly to determine the likelihood of confusion.

Before you start your application, it's advisable to do a thorough clearance search on the federal and state databases of registered marks and pending applications and the internet. If an attorney conducts the search for you, they should provide you with the results and discuss the results before filing your application.

The two main factors used to determine likelihood of confusion, according to the Trademark Manual of Examining Procedure from the USPTO, are:

1. "The similarity or dissimilarity of the marks in their entirety as to appearance, sound, connotation, and commercial impression."
2. “The relatedness of the goods or services as described in the application and registration(s).”

There are also some other factors to consider, according to this USPTO manual:

• "The similarity or dissimilarity of established, likely-to-continue trade channels.
• The conditions under which and buyers to whom sales are made, i.e., 'impulse' vs. careful, sophisticated purchasing.
• The number and nature of similar marks in use on similar goods.
• The existence of a valid consent agreement between the applicant and the owner of the previously registered mark."

What are generic trademarks?

Common, everyday names for goods and services are not registrable by themselves, as they do not identify a source. Your application will get a refusal if you make butter and try to trademark the name "Butter" alone, for example.

In theory, you're more likely to be able to register the mark "Butter" alone for something unrelated to butter, like furniture manufacturing. Consider how Apple has managed to trademark its name for electronics, even though "apple" is a generic word.

Avoid generic marks that are related to your industry.

Once-trademarked terms can become generic words through prolonged common use. Some companies must actively discourage using their company name as a generic term, like Xerox®, for photocopies.

Words like cellophane, aspirin, and escalator were once trademarked names but have become so commonly used to represent their respective product categories (plastic wrap, acetylsalicylic acid medications, moving stairways) that the companies registering these marks have lost their trademark status.

Xerox® and Lego®, for example, have been proactive about using their trademark as an adjective instead of a verb or noun in an attempt to prevent genericization (i.e., "a Xerox® copier," "Lego® bricks").

What are descriptive trademarks?

A descriptive term, like "Creamy" (used only) for butter, is also likely unregistrable. Descriptive terms by themselves are not registrable without showing that a mark has, through extended use, become an identifier for a source.

This means you need to do business for a long time without registering your mark, which can be risky. And this still doesn't guarantee your mark will be published. When consumers recognize your mark as the designation of your company, and as the source of the product or service, it has achieved secondary meaning.

Only then is the mark eligible for registration.

What other marks can't be registered?

Your trademark application will likely be rejected if you attempt to trademark any of the following:

• Surnames.
• Geographically descriptive terms.
• Deceptive/misleading marks.
• A foreign term that translates into a descriptive or generic term.
• An individual's name or likeness without consent.
• The title of a single book or movie (series are more likely to be registrable).
• Decorative or ornamental marks.

Distinctive trademarks: suggestive, fanciful, or arbitrary

The best rule for successful trademark registration is to be fanciful, arbitrary, or suggestive.

Let's start with defining suggestive marks:

Suggestive trademarks are a step above descriptive marks. They don't describe the product but the desired effect of the product. E.g. Coppertone® for sunscreen, which contains no copper, but suggests a desired tone.

Arbitrary marks are a step up from suggestive marks. These may have meaning, but it's unrelated to the use by the company. E.g., Apple®. 

Finally, we have fanciful marks. These have no meaning except when applied to a company. E.g., Polaroid®.

Want strong trademarks? Do your research

As you can see, choosing a good trademark isn't "clear-cut." It's important to consider the strength of your trademark. Take your time, research, and complete your trademark filing online with us once you're confident.

You can also conduct a free trademark search on our website (before conducting a comprehensive trademark search) to get started!