Fact Sheet: Selecting and Registering a Trademark

Considerations in Selecting a Trademark

Updated: September 30, 2016

Key steps in selecting a trademark include (1) developing a list of candidate marks, and then, for each jurisdiction where you plan to use the mark, (2) performing searches to determine whether any other parties are using the mark and (3) considering how the mark will be perceived by the relevant consumers.

Developing a List of Candidate Marks

In developing a list of potential candidate trademarks, consider the relative strength of marks. A strong or distinctive mark is easier to register and to protect from use by others than more descriptive—and, hence, weaker—marks, which can be more challenging to enforce. Trademarks can be categorized on the following spectrum of strength or distinctiveness:

  • Fanciful or Coined Marks: The strongest kind of mark is a coined or made-up word that has no meaning other than as a trademark. EXXON, VERIZON, and KODAK are well-known examples of fanciful marks. While such marks may be more difficult for consumers to remember at first, since they do not carry any inherent meaning, a trademark owner has a great opportunity to create a positive association between the mark and a product, service, or business. Once this goodwill is established, fanciful or coined trademarks generally are afforded the broadest scope of protection against third-party use of the mark.
  • Arbitrary Marks: Arbitrary marks comprise words that have a common meaning but are applied to a product or service that is unrelated to that meaning. Well-known examples of arbitrary marks are APPLE for computers, SHELL for gasoline, and BLACKBERRY for cell phones. Like fanciful or coined marks, commercially established arbitrary marks are afforded a broad scope of protection against third-party use of the mark.
  • Suggestive Marks: Suggestive marks indicate some quality or characteristic of the products or services on or in connection with which they are used, but they do not directly describe the product or service. Rather, they require some imagination, thought, or perception for the consumer to reach a conclusion as to the exact nature of the products or services. Examples of suggestive marks are AIRBUS for airplanes, KITCHENAID for kitchen appliances, and SWEETARTS for candy.
  • Descriptive Marks: Descriptive marks directly identify the nature of the products or services without imagination, thought, or perception. It is difficult to register and to prevent others from using merely descriptive marks because of the competitive need to describe products and services accurately. For example, COLD AND CREAMY as a trademark for ice cream, or merely laudatory terms such as “best” or “quality,” merely describe attributes of the product and likely are ineligible for protection. However, if consumers learn to identify the mark as being associated with a single source of origin for that product or service as a result of years of exclusive use, that mark acquires secondary meaning, and it may be registered and protected.
  • Generic Terms: A generic term is a word or phrase that is the common term associated with a particular category of products or services, and thus cannot function as an indicator of origin. Escalator and cellophane are classic examples of terms that once functioned as trademarks but that, through lack of protection, became generic and now are used as the common names for the products, regardless of their source. Generic terms are not registrable or protectable.See also Trademarks vs. Generic Terms Fact Sheet
  • Names/Surnames/Geographic Locations: In many jurisdictions, local trademark laws prohibit, in the absence of a showing of acquired distinctiveness, the registration of marks that are merely the name of an individual, a surname, or the geographic location where the products are made or from which the services emanate. For example, MCGREGOR may not be registrable, as it is primarily merely a surname which may be shared by a number of people who may have interest in using it in association with a product or service. Similarly, an attempt to register CHAMPAGNE for wine would likely be unsuccessful, as it is a well-known wine region and competitive need requires that no one producer may have exclusive rights over that name for wines.However, some countries offer protection for geographical indications through particular certification programs, particularly those for wine, other alcoholic beverages, and food products that are known to be produced in certain regions.See also Geographical Indications Fact Sheet

Performing Clearance Searches

Once you have developed a list of potential trademarks, the recommended best practice is to conduct searches to determine whether other parties have already registered and/or used a mark. You should focus your searches on countries where you have a real intention to sell your product or service. These searches should be conducted early in the process of choosing a new mark, because it is better to know whether others may claim rights to it before you have made a substantial investment.

As a first attempt, you may search databases that many countries make available online for public use. However, it is strongly recommended that you seek guidance from a local trademark professional to determine whether your mark is truly available in your locations of interest. Depending on your needs, you may wish to conduct a full search, which covers trademark registers, references that may be found through the Internet, industry databases, and business name registries. This type of search will give you the most comprehensive range of information on which to base your trademark selection.

Considering Real-World Perception of the Mark

You may also consult a local professional to advise whether a mark has an undesirable meaning; would create confusion as to the nature of the product or service; or would be difficult to read, spell, or pronounce in that country. For example, the NOVA car did not sell well in many Spanish-speaking countries, because in Spanish nova means “no go.” Local guidance can be invaluable and will help you to avoid such costly mistakes. It is also important to make sure that the Internet domain name for your trademark is available in your locations of choice.

See also Trademark Searching Fact Sheet

Additional Resources

Country Guides: Essential Information on Trademark Protection Worldwide
Searchable database of basic information on trademark filing, prosecution, registration, maintenance and enforcement in more than 100 jurisdictions. Membership required.

Trademark Basics: A Guide for Business

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