LearnAboutLaw Staff March 2008

Introduction

Strong, memorable trademarks are the signs of an experienced and thoughtful entrepreneur. What’s more, great trademarks inspire confidence in customers–before they even know who you are.

Basics and BackgroundFirst of all, trademarks can be easy to protect, or impossible to protect. A trademark is protectable if it is a “strong” mark, as opposed to a weak mark. We’ve discussed strong vs. weak trademarks, and the distinction is of vital importance; read that article before embarking on choosing a mark.

Trademarks are routinely interpreted in the courts as “strong” or “weak”, or somewhere in between. The entrepreneur should always endeavor to develop strong marks from the earliest stages of his enterprise’s development. Trademarks are evaluated on a continuum ranging from generic, to descriptive, to suggestive, and finally, to arbitrary or fanciful. You want to create a strong mark right out of the gate. Weak marks can be difficult to protect, and can cause frustrating litigation.

Let’s analyze the various levels of trademark strength:

 

Weakest Trademarks : Generic marks are trademarks that merely denote the product itself, rather than the source of the mark. Generic trademarks are never entitled to trademark protection. One cannot claim the word “Car” as a trademark for an automobile. The policy is simple: granting a trademark for a generic term would remove that term from the public lexicon–thereby excluding the public from its use. If you have a generic mark, you have essentially no trademark protection at all; you cannot prevent others from using that mark.

Medium Strenth Marks : Descriptive marks are slightly stronger than generic marks, but are only entitled to trademark protection under certain circumstances. Descriptive trademarks are marks that describe a significant characteristic of the underlying product or service. Descriptive marks generally suggest the ingredients, qualities, or characteristic of the product or service they represent. Examples of descriptive marks include “UnCurl” for a hair-straightening product, and “The Sak” for women’s handbags. The policy against granting trademark protection for descriptive marks mirrors the policy with respect to generic marks.

Strong Marks: Suggestive marks are those marks that require the imagination, thought and perception of a consumer in order to determine the nature of the goods. In this category a mark is considered as inherently distinctive and worthy of protection immediately. Such marks do not need the requirement of secondary meaning. Arbitrary or fanciful marks are treated like the suggestive marks. They are inherently distinctive.

Strongest Marks (Arbitrary and Fanciful Marks) : Marks that are either arbitrary or fanciful (some lawyers and courts use the terms interchangeably, and other treat fanciful marks as even stronger than arbitrary marks) are entitled to the strongest protection. Arbitrary marks are those marks that use a familiar word in an unfamiliar way, while fanciful marks are those marks which are invented solely for its use as a trademark. A fanciful mark is one that has been made up or invented by its owner.

What are some examples of these super-trademarks? America’s biggest and most successful companies can teach us a great lesson in trademark development: Marks like “Valium” and “Viagra” are completely fanciful terms, and are among the strongest marks around. Fanciful marks are either previously unknown words, or archaic or obsolete terms that are no longer commonly known. Non-word marks (letters, numbers, designs and pictures) may also be considered fanciful. Examples of fanciful marks are EXXON, KODAK, and XEROX.

Always begin with a strong trademark before you build your brand. Many entrepreneurs fail at this first step, and encounter problems down the road.

Search For Existing Trademarks

You must also ensure that your proposed mark does not infringe on the mark of another already in use. This task has two steps. First, you must search for existing marks. Second, you must analyze the results you find.

Begin by performing a trademark search. You can hire a professional service to do a trademark search for you. The cost can range between $300 and $1,200. The value of such professional search services has been eclipsed by free services on the Internet. While I have used full-service search firms, I prefer to conduct trademark searches as follows. You can search registered and pending trademarks at the U.S. Patent and Trademark Office’s Web site by pointing your browser to www.uspto.gov/main/trademarks.htm and click “Search Trademarks” to use the Trademark Electronic Search System (TESS).

Once there, use the New User Form Search. In the search window, enter the name that you wish to use in the box “Search Term.” Make sure the “Field” term is set to “Combined Word Mark.”

To ensure that your search effectively locates all potential conflicts, do the following:

  • Search for phonetic variants of your proposed name, because phonetically similar marks can cause a trademark conflict. For example, if your company name is Cybertech, search for Cybertek, Cybertex, Sybertex, etc.
  • Search for both the plural and singular versions of your proposed name.
  • If your name uses more than one word, search for each word individually.
  • Follow the instructions in the use of wildcard search terms.

Searching for trademarks is an imperfect science, though, and no search can be expected to discover all users of a mark. Remember: trademark rights are created by the use of a trademark in the public marketplace and not by registration of the trademark. In fact, most trademarks are never registered, although they are used in the public marketplace. Thus, unregistered marks may be valid marks–and they are much more difficult to discover.

The last step of your trademark conflict search should be an Internet search with one of the popular search engines. Such a search will probably discover any users of your proposed name.

Using Your Name As a Trademark

There are strong reasons not to use your name as your trademark: if protecting your personal assets from LLC and corporate liabilities is important to you, do not use your name within the name of the LLC (or corp), as in “Dave Clark Construction, LLC”–if you do so, you create a strong evidentiary tie between yourself and the LLC. Separateness is a cornerstone in liability and asset protection.

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