How to Select a Good Trademark

DEREK FAHEY, ESQ.

A trademark can become one of a business’s most important assets. A strong mark distinguishes the business from competitors, while a weak mark may create legal disputes and limit marketing effectiveness.

1. Avoid Marks That Cannot Be Registered

Federal registration provides significant enforcement advantages. Because some wording is inherently difficult or impossible to register, registrability should be considered before adopting a mark.

2. Trademark Strength Matters

Marks generally range from strongest to weakest: fanciful, arbitrary, suggestive, descriptive, and generic. Stronger marks are typically easier to register and protect.

3. Choose Fanciful or Arbitrary Words

Coined terms and familiar words used in an unrelated context are memorable and highly distinctive. They often provide a stronger legal foundation for a brand.

4. Avoid Descriptive and Generic Words

Descriptive terms directly communicate qualities or characteristics of the goods, while generic terms name the goods themselves. These terms are difficult—or impossible—to monopolize as trademarks.

5. Avoid Surnames

A surname may be refused registration unless it has acquired distinctiveness. Combining a surname with descriptive wording often produces a weak mark.

6. Avoid Confusion With Existing Marks

A proposed mark should not be confusingly similar to an existing mark for related goods or services. A clearance search can help identify conflicts before a business invests in launch and promotion.

7. Avoid Three-Letter Acronyms and Numbers

Acronyms and numbers can be harder for consumers to remember and may be crowded with similar uses. Distinctive, colorful words are often more effective brand identifiers.