Author: Joanne Gilbert, Keyser Mason Ball LLP.
When choosing a trademark that will be the face of your brand, remember that building its value in the marketplace will depend on your ability to protect it. The goal of any good trademark is to distinguish your goods or services from those of your competitors. While it is tempting to choose a trademark that is straightforward and descriptive of the goods or services being offered, being too straightforward will not make for a legally enforceable trademark. A descriptive trademark may only be registered if it has become distinctive through use over time, meaning that it has become known in the marketplace to the point that customers associate it with your business.
So what kind of trademark should you choose?
Fanciful Trademarks are non-descriptive and have nothing to do with the goods or services being offered. Coined terms work very well. No other business in your industry will lay claim to these words because they have no meaning outside of their use as your trademark. “KODAK” for cameras is an example. Arbitrary Trademarks are also strong trademarks. They are words that are not coined terms, but still have nothing to do with the goods or services being provided. “APPLE” for computers, for example.
Suggestive Trademarks allude to what your business is offering to the customer without being explicit. More creativity is required to ensure that these trademarks suggest what is being offered without describing it. “SANDALS” for a beach resort is a good example.
Being creative with your trademarks will help to ensure that they are distinct. Try altering the word of the product you are selling. Apple has had much success selling its “iPhone” in this way. You can also try pairing words that are not typically seen together. “Facebook” is much more registrable than “Online Scrapbook”might have been. Finally, try inventing new words by combining elements of existing words, like “Pinterest”. This is a great way to suggest what you are selling without expressly describing it.
This article was originally published in CONNECT Magazine’s Summer 2016 issue.
