Choosing a Trademark

Choosing a name for a product or company can be a challenge, but the greater challenge is choosing a name that doubles as a strong trademark. What exactly do I mean by a strong trademark? Well, a strong trademark is one that is inherently distinctive. Consider, as an example, KODAK which is a coined phrase and compare it to the plethora of trademarks related to weight loss with the term SLIM in them. As a strong trademark, KODAK is afforded a broader range of protection than the weaker SLIM containing trademarks for weight loss. This means that there must be greater differences in the goods and services provided and between the trademarks themselves to prevent a likelihood of confusion from occurring when a strong mark is copied. With the weaker trademarks, smaller differences between the goods and services provided and the trademarks are sufficient to prevent a likelihood of confusion between trademarks.

So how do you go about choosing a strong trademark? Here are a number of things to consider that may help you make the decision that is best for you:

  • In general, coined terms are generally considered to be stronger trademarks than those made up of letters, numbers or dictionary words
  • Actual words with a known meaning that have no association or relationship with the goods and services can also be considered strong marks (APPLE for computers)
  • Unique design features can help to create a more inherently distinctive trademark, however, there is a risk of limiting your protection to instances where others use a similar design feature
  • If a trademark is used for an extensive period of time and becomes well known, an otherwise weak trademark can become stronger (McDonald’s, WENDY’S)

While not specifically related to the strength of your trademark, here are some additional things to consider when choosing a trademark:

  • Is the trademark easy to spell?
  • Is it easy to pronounce?
  • Does it have a translation into another language that could be considered derogatory?
  • What type of message does it convey? Is it likely to upset a particular group of people?
  • Is anyone else using a similar trademark? Are they using it for similar goods or services?

While a strong trademark provides for broader protection, a weaker trademark may still be registrable and provide protection for your brand. It is ultimately up to you to decide whether you feel that your trademark is sufficient for your purposes, but always keep in mind that when a weak trademark is used a competitor can use a more similar mark with less chance of infringement than when a strong trademark is used.