The Dos and Don’ts of Choosing a Trademark

BEVERLY A. BERNEMAN

Partner


The Dos and Don’ts of Choosing a Trademark

A clever name, logo or phrase can go a long way to identifying your service or product. You can protect these “trademarks” by registering them with the United States Patent and Trademark Office. However, the rules governing the registration of trademarks can limit your choices.

PROTECTABLE TRADEMARKS

Proper protection for a name, phrase or logo as a trademark requires actual use in connection with goods or services. Customers or clients should identify your goods and services with the trademark. Protectable trademarks must either be inherently distinctive or have acquired secondary meaning. Coined or fanciful words like CLOROX for bleach or KODAK for cameras are distinctive because they have never been used for another purpose. Words like TENDER VITTLES for cat food may have meaning in other contexts but have acquired a distinctive designation for the product. The same applies to phrases such as ‘YOU’RE IN GOOD HANDS WITH ALLSTATE’. The phrase itself contains a series of common words. But when used in conjunction with each other and the company name, they have acquired secondary meaning. Common words like ‘soap’ or ‘milk’ cannot be registered as trademarks because they are generic. Some words that were once trademarks can become generic. For instance, ‘aspirin’ was a protectable trademark at the very beginning of its use. Bayer Company allowed the word to be used as a term for all pain relievers. Thus, the word became a generic term for pain relievers. Additionally, certain other types of trademarks cannot legally be registered such as immoral or scandalous words, words that indicate a false connection with the goods or services, deceptive words, disparaging words, flags, insignia, coats of arms, a name, a signature, false designations of origin using a geographic term, functional features and ornamentation.

THE DO’S AND DON’TS

Given these rules, how does one go about choosing a protectable trademark?

DO use coined words or phrases that have no prior meaning. Example: MICROSOFT for computer applications.

DO use arbitrary or unrelated words for the product. Example: DOMINO’S for pizza.

DO use terms that suggest the nature of the product or services. Example: COPPERTONE for suntan lotion. (But be sure that no one else is already using the term as a trademark.)

DO use terms that describe the product, but be able to prove that your customers or clients have recognized the term with your product thus creating secondary meaning. Example: KRISPY for crackers.

DO use fonts and colors in your trademark as a way of further distinguishing your goods and services from others.

DO use slogans that describe your product. Example: DAN RIVER DESIGNER FABRICS for textile fabrics.

DON'T use any of the prohibited trademarks described above.

DON'T use a trademark that conflicts with someone else’s trademark. Example: SMALL STREET JOURNAL versus WALL STREET JOURNAL.

DON'T use a trademark that would confuse customers as to the origin of the product. GOLDEN GRIDDLE for a pancake restaurant where someone already has registered GOLDEN GRIDDLE for table syrup.