Trademark Law: How Not to Pick a Trademark

1. Do not pick a trademark that you’ve heard used before on similar goods or services. Although it may seem obvious, I have had clients call and ask me to clear and seek registration of a mark that they saw on a similar store or restaurant while on vacation. Very simply, if someone else already has it, you can’t have it and you don’t want it because the goal is to create your own unique brand, associating your product or service with you as the source. Taking someone else’s mark or one very similar to it not only works at cross purposes with this goal, it will get you sued for trademark infringement.

2. Do not pick a trademark that merely describes your product or service. While it seems like a good idea to let your customer know what it is you’re selling, i.e. Marcy’s Home Cooking (for a catering service) or Ruben’s Professional Hair Cuts (for a barber shop), this makes for an extremely weak trademark that will be difficult and expensive to police and protect. Under US trademark law, you cannot obtain a trademark in a word that is “merely descriptive” of the good or service at issue. The reasoning behind this is that it is in the consumer’s best interest for sellers to be able to accurately describe the good or service. If one seller were allowed to co-opt descriptive words for a product to the exclusion of all other sellers, then consumers would be harmed because the products that they need and want couldn’t be accurately described by their sellers. What this means is, if you pick a merely descriptive word for your product or service, you can’t keep others from using that word in relation to similar goods. Again, if the goal is to pick a mark that will allow consumers to exclusively associate a good or service with you as the source, picking a descriptive mark won’t do it. Although there are some exceptions (basically if you’ve spent a boatload of advertising on the mark and customers no longer see it as “merely descriptive” but, rather as shorthand for you as the source), you are limited in your ability to stop others from using your mark if it is too descriptive.

3. Don’t use your last name if there is already another prominent mark in your field with that name. Let’s say your name is Stanley McDonald. However, if you open a restaurant called “McDonalds,” you will likely receive a cease and desist letter from the Golden Arches and they will have little sympathy for how the name is a tribute the long proud lineage of the McDonalds of Kingsport, Tennessee.

4.Don’t make plans around a mark that hasn’t been adequately cleared. Again, although it may seem obvious, don’t pick a trademark and start using it without clearing it first. We often get calls from clients who are launching a $50,000 media blitz in three days using the new mark and ask us to clear it. If there is a problem with the mark, everyone from legal or marketing is in a huge mess–a mess that would have been easily avoidable if the mark was cleared before any investment was made in it.

5. Don’t pick a mark that contains the name of a place you think makes the goods sound fancier. For example, don’t call your bottled water “Iceland’s Purest” if it really doesn’t come from Iceland. If a mark contains material that is “geographically misdescriptive,” you likely won’t be able to get it registered.
The best and strongest trademarks are those that are purely made-up or “arbitrary and fanciful.” Once you’ve found one that sounds like coined nonsense, you know you’ve really got something there. But you’d better use it and register it before somebody else does.

Thoughts?

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