Choosing Strong Trademarks, Avoiding Unproductive Conflict: A Simple Key to Success

Assisting a client with trademark needs may appear simple. Even so, trademark attorneys see clients repeatedly make common mistakes in choosing trademarks. This short article will describe two easily avoidable missteps: 1) failure to request counsel to conduct a proper trademark search; and 2) failure to choose trademarks that are truly capable of being protected.

Existing Marks

A common mistake made by business owners is to register a corporate name without first performing a trademark search. A trademark search will show whether a corporate name is being used by another company, and whether it can be registered as a trademark. The typical scenario involves the registration of a business name with the state, only to find that there are either common law uses of that corporate name as a mark in other states – or sometimes even a federal registration. Mere filings with a state have resulted in businesses being sued for trademark infringement in federal court. This can occur even where the allegedly infringed mark has not been federally registered, but is merely “used in commerce” by another business. Many are unaware that unregistered marks “used in commerce” are protected under 15 U.S.C. § 1125(a)(1) of the Lanham Act.

When the alleged infringing act is the mere registration of a corporate name, though damages may be negligible, the business may be suddenly involved in a lawsuit – requiring precious resources and time to extract itself from litigation. Even when a lawsuit does not immediately arise, a prior user may still make itself known at a later date. In such a case, a business may be unwillingly forced to find a new identity – often after investing considerable time and effort building its brand and name recognition – in order to avoid conflict with a pre-existing mark.  Had a qualified trademark attorney carried out and analyzed a trademark search, these situations could be avoided altogether.

Compared to the cost of litigation, a trademark search can be inexpensive. Even a basic search via the Internet alone, reviewed by an attorney, may provide sufficient information regarding whether one should adopt or forgo use of a proposed trademark. Due to the global nature of the present-day marketplace, trademark strategy may require a preliminary search in potential foreign jurisdictions as well as thoughts on whether to file a Madrid Protocol, CTM (EU) or other international trademark application.

Choosing a Meaningful Mark

Another common mistake made by businesses that desire to begin using a new trademark is choosing a mark that does not adequately distinguish the client’s goods or services, and as such will be difficult to protect. Most businesses gravitate toward choosing marks that describe the goods or services that will be provided.  These marks are among the weakest and most difficult to protect. A trademark is measured on a scale which runs from, at strongest, “arbitrary and fanciful” to “suggestive,” and, at second weakest, from “descriptive” to “generic” marks. The difference between a suggestive and a descriptive mark is small. A suggestive mark requires some imagination or thought to reach a conclusion about some feature or characteristic of the product. With a descriptive mark, however, little imagination or thought is required.

Unfortunately, many businesses choose and become set on a trademark without first understanding the factors upon which the ability to protect a trademark and the strength of that mark are based. As a result, most businesses choose descriptive or generic trademarks, for example, “furniture movers” for moving services. These trademarks are the most difficult, and often impossible, to protect. On the other hand, the best and easiest to protect trademarks are those that are often completely made-up (that is, “arbitrary and fanciful”) and, therefore, suggest no meaning, for example, Kodak™, Polaroid™, Apple™ (for computers) and Xerox™.

A business that understands early on the process of choosing a trademark or company name, as well as the benefits and disadvantages of choosing an appropriate mark, can be key to saving precious resources and building goodwill that can drive profits for years to come.