Concepts to Consider When Creating a Trademark

DEREK FAHEY, ESQ.

Whether naming a new business or a new line of goods or services, several basic concepts should be considered before creating a trademark. Following these principles can place a business in a stronger position to develop a distinctive mark that is easier to protect from infringers.

1. Avoid Words That Describe The Goods or Services

Marks that describe the product, service, or a characteristic of it are considered descriptive. Descriptive wording can be difficult to register and enforce because competitors may need to use the same language to describe their own offerings.

2. Use Arbitrary or Fanciful Words

Fanciful marks are coined terms, while arbitrary marks use existing words in a way unrelated to the goods or services. Because these terms do not describe the product, they are generally stronger and easier to protect.

3. Avoid Words That are Primarily Surnames

Terms that consumers primarily recognize as surnames can be difficult to register without additional proof of distinctiveness. A business seeking a stronger mark should generally avoid relying on a surname as the dominant wording.

4. Avoid Likely Confusion With Existing Marks

A mark that is likely to confuse consumers with an existing trademark may be refused registration and may create infringement risk. Relevant considerations include similarity of the marks, relatedness of the goods or services, trade channels, purchasing conditions, and the number and nature of similar marks already in use.

5. Avoid Deceptive Wording

Words that mislead consumers about a product’s source, nature, quality, or characteristics should be avoided. Deceptive wording may be unregistrable and difficult to enforce.

6. Avoid Primarily Geographically Descriptive Terms

A mark may be geographically descriptive when consumers are likely to believe the goods or services originate in the place identified by the mark. Such wording is generally weaker and more difficult to protect.

Applying these principles before investing in branding can improve the likelihood that a proposed mark will be distinctive, registrable, and enforceable.