Branding Strategies - Part One: Choosing a Trademark

Choosing a strong and distinct trademark is imperative in order to distinguish the goods and/or services of one company from those of its competitors. The life of a mark begins with its selection and clearance and the lifelong value of a trademark can depend greatly on the care with which it is selected. 

There are no set rules for picking a new trademark.  Many trademark owners go with the first mark they think of in their creative process, some use selection committees consisting of representatives from legal, advertising, marketing and sales.  No matter what selection process is adopted, it should be designed to create marks that meet the owner’s needs and yet ensure the new mark will be sufficiently strong to survive in the marketplace.  

Following are some basic strategies to keep in mind when choosing a new mark:

• The mark should be short and distinctive. 
• The best way to have a distinctive mark is to have a "fanciful mark," meaning it is a made-up word, such as Xerox or Kodak. These are the strongest and most protectable types of marks. 
• The second strongest type of mark is the “arbitrary mark.” Arbitrary marks have a meaning in the English language, but the meaning has no relationship to the goods or services on which it is used like "Apple" for computers.
• The third type of mark is the “suggestive mark.” Suggestive marks are words that have an English language meaning that suggests the type of goods or services on which the trademark is used such as “Weed Eater".
• Its best to stay away from “descriptive marks.” A descriptive mark example is "Fizzy" when used on sparkling water.
• “Generic marks” for example, "Shoe Store" when used in connection with a shoe store are not registrable with the United States Patent and Trademark Office.
• The mark should be easy to spell, pronounce and remember.
• The mark should not carry any offensive or negative connotations, either toward the new product or for any segment of the purchasing public.
• Avoid a mark that could be confused with another mark in the same or similar class of goods or services.  If a chosen mark is similar enough to an existing mark for similar goods or services, trademark law prevents the use of the second mark. Ideally, companies should choose three marks they like and then complete a search on all three to see which will have the least problems being used, registered and protected. It is highly advisable to engage a trademark attorney to assist you with a comprehensive search and the filing of your trademark.

For additional intellectual property questions visit our website at pglawgroup.com.
Or contact Pollie Gautsch, Esq. at pollie@pglawgroup.com.

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