Denver patent and trademark attorney Mark Trenner often receives calls from small business owners about selecting a new trademark. Below is a transcript of an interview Mark gave, in which he shares some of the common pitfalls business owners may encounter when selecting a new trademark.
Selecting A New Trademark
Interviewer: What is the biggest pitfall business owners should avoid when selecting a new trademark for their business?
Mark Trenner Selecting a mark that is generic of the goods or services being marketed.
Interviewer: What do you mean by ‘generic’?
Mark Trenner : A generic mark is a word or words that tell the user exactly what the product (or service) is. For example, the word “gas station” is generic for a gas station, and the word “restaurant” is generic for restaurant. Read more about generic trademarks here.
Interviewer: Can you trademark a generic word?
Mark Trenner : No. Generic words are considered to be in the public domain and cannot be protected by trademarks. Everyone selling that product should be able to use the generic term for that product without having to be concerned that someone trademarked it.
What Should A Business Owner Do When Selecting a New Trademark
Interviewer: That makes sense. What should a business owner do instead?
Mark Trenner : Suggestive marks are subject to trademark protection, so are arbitrary and fanciful marks.
Interviewer: Can you give the readers an example of each?
Mark Trenner : Sure. A suggestive mark suggests something without being outright generic or descriptive of the product. FOCUS for contact lenses is a good example. The mark FOCUS suggests to consumers that they will see better with FOCUS brand contact lenses.
Interviewer: And that’s not generic (or descriptive). I understand. What about arbitrary marks?
Strong Trademarks are Arbitrary and Fanciful
Mark Trenner : Arbitrary marks are real words, but applied to something completely different (or arbitrary). For example, APPLE when applied to computers or electronics. The word ‘apple’ is a real English word. But ‘apple’ is a fruit, not an electronics product – except when used as a trademark.
Interviewer: What is a fanciful mark?
Mark Trenner : Fanciful marks are those which are completely made up. For example, GOOGLE, XEROX, EXXON. Those were all made up to market the brand.
Interviewer: In other words there was no real English word prior to the mark being put out there.
Mark Trenner : That’s right. These are going to be the strongest marks. While someone may be able to use a word in their mark that is the same as a word used in another trademark, as long as it is for different products (for example, for t-shirts when the other mark is applied to financial services), you probably wouldn’t want to use the mark GOOGLE for ANY service, even if its not a search engine – because GOOGLE is such a strong mark.
Pitfalls in Selecting a New Trademark
Interviewer: What are some other pitfalls business owners should be aware of?
Mark Trenner : Selecting a mark that is confusingly similar to someone else’s mark. Not only do you want to select a mark that is different (in spelling, sound, etc.) than anything a competitor has, it is important that you do not select a trademark that is considered confusingly similar to another trademark.
Interviewer: How can a business owner be sure they are not selecting a mark someone already has?
Mark Trenner : I always recommend working with an attorney. An attorney can order a full availability search and after reviewing it, provide a clearance opinion. At least if you have a well-reasoned clearance opinion, it will be more difficult for a competitor to allege willful infringement.
Interviewer: We’re almost out of time for today’s interview. Can you give our readers one more pitfall they should try to avoid?
Mark Trenner : Failing to fully or accurately identifying all of goods/services in a trademark application. It is important to discuss all products or services being offered under the mark with your trademark attorney before submitting a trademark application. And then follow-up on a regular basis, whether that is quarterly, bi-annually, or at least annually, to be sure that any products which have been added to the product lineup are either covered by the existing registration, or a new application is filed.
Interviewer: That’s all we have time for today. Thank you for these important tips. As always, Trenner Law does not offer legal advice on its blog, and the discussion above is general information only. Please speak with your trademark attorney for legal advice specific to your situation.