How to Pick a Good Trademark—Before You Fall in Love with a Bad One

Hurrah! You are starting a new venture. And you realize that you need to differentiate yourself by creating a brand.

So, you sit down with your partners, your employees, your spouse, your children, your friends—or anyone else willing to listen—and begin tossing around names. One name is too long. Another is too difficult to spell. A third sounds great, but no one can pronounce it. Then, suddenly, someone says it: the perfect name. Everyone stops. Everyone smiles. That is it! The name tells consumers exactly what you do. It describes your product perfectly. The domain name may even be available. The corporate name may be available. You can already picture the logo on your website, your packaging, your business cards, and perhaps one day on the side of a very large building. You fall in love with it. And that may be precisely where your trouble begins.

Before you spend thousands of dollars developing a logo, printing packaging, building a website, purchasing advertising, and introducing your new brand to the world, stop. Take a breath. And make sure the trademark you have selected is one that you can use, protect, and—one day—sell. How do you do that? Let us begin at the beginning.

First, Understand What a Trademark Is. A trademark is a source identifier. A trademark tells consumers who is responsible for particular goods or services. It is a shorthand signal that the product on the shelf, the advertised service, or the software being downloaded comes from a specific source.

Think of the Nike® Swoosh.

Think of the Adidas® stripes.

Think of the Target® bullseye.

Think of “brown”, the color used by UPS®.

Think of the contrasting red sole associated with Christian Louboutin®.

You do not need to see the company’s full name to understand the message. You see the symbol, design, color, or other identifier, and you know—or believe you know—who is responsible for the product or service. That is the power of a trademark!

Almost anything can function as a trademark. A word. A phrase. A logo. A symbol. A color. A sound. A product shape. Packaging. Even, in unusual circumstances, a scent. Anything?

Yes, almost anything can serve as a trademark if it identifies the source of goods or services, is not merely functional, and otherwise qualifies for protection under trademark law. Unlike patents and copyrights, trademark rights can potentially last forever. Yes—forever. As long as the mark remains in use in commerce, stays distinctive, and all required maintenance filings are satisfied, those rights may continue indefinitely. That is one reason I love trademarks.

Second, Pick a Trademark That Is Worth Protecting. Not all trademarks are created equal. Some trademarks are legally strong from the very beginning. Others are weak, difficult, and expensive to protect. Still others can never function as protected trademarks at all.

Trademark law generally places marks along a spectrum: Fanciful. Arbitrary. Suggestive. Descriptive. Generic. The strongest trademarks are usually fanciful, arbitrary, or suggestive. Descriptive marks are weak. Generic marks the weakest.

A fanciful trademark is a completely invented word. It had no meaning before someone created it to function as a brand. An arbitrary trademark is an existing word used in connection with goods or services that have nothing to do with the word’s ordinary meaning. APPLE® for computers is the classic example. Apples do not describe computers. They do not tell you what computers do. The word is being used arbitrarily. A suggestive trademark hints at something about the product or service, but it requires imagination, thought, or perception to understand the connection. These are the types of trademarks that generally receive protection without the owner first having to prove that consumers have learned to recognize them as brands.

A descriptive trademark immediately tells the consumer something about the goods or services: what they are, what they do, what they contain, how they work, or one of their qualities or characteristics. VITAMINWATER®, for example, communicates that the product is water containing vitamins. The consumer does not need to think very hard about it. The name immediately describes an important characteristic of the product.

Descriptive marks are tempting. Very tempting. You are launching a new company. You do not have millions of dollars to spend educating the public. You want consumers to look at your name and immediately understand what you sell. That makes sense from a short-term marketing perspective. But it can create a long-term legal problem. A merely descriptive mark may not be protectable unless and until it acquires distinctiveness—sometimes called “secondary meaning.” That means consumers must come to understand that the descriptive term identifies not merely a type of product or service, but one particular commercial source. Acquiring that recognition can require years of use, substantial sales, extensive advertising, and a great deal of money. Incidentally, VITAMINWATER® has acquired secondary meaning over time.

So, do not fall into the trap of picking a descriptive name merely because you believe it will save you money on advertising. Resist! The money you believe you are saving today may be spent many times over later trying to protect a weak brand.

And what about a generic term? Forget it! A generic term is the common name of the product or service itself. You cannot claim exclusive trademark rights in the word “computer” for computers or “bakery” for a bakery. Your competitors must be free to use the ordinary name of the goods or services they sell. Generic terms do not receive trademark protection. End of story. Period.

Third, Pick a Name People Will Remember. Legal strength is critically important. But you are not selecting a trademark solely for the benefit of lawyers and judges. You are selecting a trademark to create a brand for consumers. So, select something memorable! Select something consumers can pronounce! Select something they can spell—or at least find again after hearing it once. Select something that looks good on a website, a sign, a product, an invoice, an advertisement, and, perhaps, the side of that very large building you are already imagining. Select something that captures your Unique Value Proposition!

Guy Kawasaki has offered entrepreneurs some interesting practical advice. He has suggested considering names beginning with letters from A through M because those names may appear earlier in alphabetical lists, directories, and exhibition layouts. He has also encouraged entrepreneurs to select a mark with “verb potential”—a name that people can naturally repeat, use, and remember. Guy Kawasaki, The Art of the Start: The Time-Tested, Battle-Hardened Guide for Anyone Starting Anything pg 35 (2004). Is beginning with the letter A through M a requirement of trademark law? Of course not. Is “verb potential” a legal test? No. But are they practical branding considerations worth thinking about? You bet they are.

Most importantly, try to select a mark that captures something about your company’s unique value proposition without merely describing the product or service. That is not easy.

But this name may become your brand. It may represent your reputation, your goodwill, your customer relationships, and everything your company has worked to build. It is worth the effort.

Fourth, Understand Who Trademark Law Is Designed to Protect. Trademark law is about the consumer. Yes, the consumer. It is not about you. It is not about your company. And it is not about rewarding you for coming up with a clever name. The ability to stop someone from copying or misappropriating your trademark is important, but it flows from the law’s broader purpose: preventing consumer confusion.

Trademark law is intended to help consumers understand the source of the goods and services they purchase. When consumers see your trademark, they should not mistakenly believe that your product comes from another company, is affiliated with another company, is sponsored by another company, or has been approved by another company.

Are you confused? Perhaps an example will help. You decide to sell sneakers. You design a logo that looks like a checkmark and place it prominently on the side of each shoe. Consumers see your checkmark. It reminds them of the Nike® Swoosh. Some consumers believe your sneakers are Nike®, are affiliated with Nike®, or are authorized by Nike®. They purchase your sneakers because of that mistaken belief. That is consumer confusion! And rest assured, Nike is unlikely to be amused.

It does not necessarily matter that your logo is not identical to Nike’s logo. Trademarks do not need to be exact copies to create a problem. Marks can be confusingly similar in appearance, sound, meaning, or overall commercial impression. Adding one letter may not save you. Changing the spelling may not save you. Using a slightly different design may not save you.

And saying, “But I did not intend to confuse anyone,” may not save you either. The real question is whether consumers are likely to be confused under all the relevant circumstances. That is a legal question.

Fifth, Do Not Fall in Love Before You Conduct a Proper Trademark Search Picture this. You have selected your name. You have formed the company. You have purchased the domain. You have paid a designer to create a beautiful logo. You have printed thousands of labels, boxes, menus, brochures, shirts, or promotional materials. Your website is live.Your advertising campaign is ready. Your grand opening is approaching.

But then, bam! The letter arrives. It is thick. It is formal. It contains words such as “infringement,” “likelihood of confusion,” “immediately cease,” and “all rights and remedies.”

What the heck! Your excitement evaporates. Your stomach tightens. You call a trademark attorney, and you learn that another company began using a confusingly similar trademark before you did. Now you may have to abandon the name, take down the website, redesign the logo, destroy the packaging, notify customers, and begin building your brand all over again. What a waste! What a completely avoidable waste. This is why you should conduct a proper trademark clearance search before adopting and investing in a new mark.

Please understand: simply searching the records of the United States Patent and Trademark Office is not enough. Oh sure, searching the federal trademark database is important. Very important. But it is only one part of the process. Not every business with trademark rights has obtained a federal registration. In the United States, rights may arise through use of a trademark in commerce. That means another company may have enforceable rights even though its mark does not appear as a live federal registration.

Checking whether the domain name is available is not enough either. Searching Google is not enough. Searching social media is not enough. Searching a state’s corporate-name database is not enough. And merely obtaining a search report is not enough. A search report gives you information. Someone still has to determine what that information means.

Sixth, Have an Experienced Trademark Attorney Evaluate the Results. The question of whether two trademarks are confusingly similar is not simply a matter of locating identical words in a database. An experienced trademark attorney must review the relevant results and evaluate them in context. How similar are the marks in appearance, sound, meaning, and overall commercial impression? How closely related are the goods or services? Do the companies sell to the same customers? Do they advertise through the same channels? Is the earlier mark strong or weak? What does that even mean, “strong” or “weak” mark? Are consumers likely to believe the two businesses are connected? These questions require legal analysis and judgment.

Ultimately, courts, tribunals, and examining attorneys apply established legal standards to determine whether a likelihood of confusion exists. A trademark attorney conducting a clearance analysis evaluates the risk by applying those standards before you commit substantial resources to the mark. That takes time. It takes experience. And, yes, it costs money. Is it worth the investment? You bet it is.

Seventh, Think of a Trademark Search as a Risk Assessment Tool. A trademark search is somewhat analogous to a title search conducted before purchasing a house. You would not knowingly purchase a house without investigating whether someone else has a claim to it. A bank would not lend you hundreds of thousands of dollars without examining whether the title is clear. Why? Because the paint may be beautiful. The kitchen may be perfect. The backyard may be everything you dreamed of. But none of that matters if someone else owns the property—or has rights that interfere with yours.

A trademark search is similar, but not identical. A trademark search cannot guarantee that no one will ever object to your use of the mark. It is not a crystal ball. It is a risk assessment tool.

It helps you determine whether someone else may be in a position to stop you from using the mark. It helps you evaluate whether you are likely to receive a cease-and-desist letter. It helps you decide whether investing in the brand is prudent. It may also help determine whether the trademark can become a valuable asset—one that can eventually be licensed, franchised, financed, or sold. That is peace of mind. And peace of mind is much less expensive before the launch than after the letter arrives.

Eighth, Choose the Brand Before the Brand Chooses Your Problems. So, celebrate your new venture. Enjoy the process of creating something new. Dream about the logo, the website, the packaging, the customers, the growth, and that very large building with your company’s name displayed across the top. But do not confuse enthusiasm with preparation.

Choose a strong, distinctive trademark. Make sure it works from both a legal and marketing perspective. Conduct a proper clearance search. Have an experienced trademark attorney analyze the results. Then protect the mark and use it consistently.

An ounce of prevention is worth a pound of cure. A proper trademark search and a thoughtful legal opinion are that ounce of prevention. Do not wait until your website is live, your packaging is printed, your signs are installed, and someone else’s lawyer is knocking on your door.