1. Stay Away From Common, Descriptive Terms
There is an almost irresistible impulse by business owners to trademark the everyday, ordinary terms used to describe their business, product, or service. Given that a trademark provides nationwide, exclusive rights to the protected matter, what could be better than being able to stop your competitors from using terms they need to describe their own offerings? Unfortunately, the trademark office won’t register descriptive marks, precisely for this reason.
Before deciding upon a trademark, ask yourself, “do my competitors need or already use this term or phrase to describe their own similar offerings?” If the answer is yes, come up with a new idea.
Examples of Descriptive Marks
AMERICA'S BEST POPCORN! popcorn.
BEEF & BREW restaurant.
CD-CREATOR computer program.
CONSUMER PROTECTION PLAN auto repair insurance.
BREWSKI bar services.
COUNTRY MUSIC ASSOCIATION for an association promoting country music.
2. Try to Be Fanciful or Arbitrary
Fanciful marks make the best brands. Just ask AMAZON, STARBUCKS, and EBAY. Fanciful marks are made up words or symbols that had no meaning prior to its adoption by a business. For example, EXXON wasn’t even a word in the English language until the company built gas stations around the country.
Fanciful marks are difficult to come up with. However, an arbitrary mark can make a good trademarks as well. An arbitrary mark takes a common word and uses it in an unexpected way, for example - APPLE COMPUTER. What do apples and computers have to do with one another? Not a whole bunch.
3. Suggestive is OK, too.
Sometimes you want to capture an element of what your product or service does or provides to your customers with your brand name. The trick is to do this with subtlety to avoid the trademark office arguing that your mark is descriptive.
With suggestive marks, you can make the argument that there is a leap of imagination required by the consumer upon seeing the mark and understanding what sort of product or service you’re offering them.
Could your competitors describe their identical products and services in a different way without using the words you’re looking to trademark? If so, then your mark may be suggestive.
Examples of Suggestive Marks
FLORIDA TAN suntan lotion.
GOBBLE GOBBLE processed turkey meat.
HABITAT home furnishings.
L'EGGS womens' hosiery.
SWEETARTS candy.
7-ELEVEN food store chain.
4.Other Bad Ideas (Sometimes)
Trademark law is complex. If you're considering filing yourself or with the assistance of a form filing service like LegalZoom, beware that you don't know what you don't know. Below is a list of common issues we see everyday. Oftentimes, it's possible to argue with trademark office that a mark should register, or devise an alternative strategy to secure a registration despite one of the problems below coming up. It all depends on the facts surrounding the mark.
Deception
Your mark shouldn’t attempt to deceive your customers by making them think your goods or services are something that they aren’t. For example, including the word "organic" in your mark when your products are not in fact organic.
Beware Translations
Trademarks that include non-English words must include an English translation. In determining if the mark is available to register, the trademark office searches for the English equivalent. So, for example, imagine there is a registered trademark RED UMBRELLA for a patio furniture company. You happen to apply for the mark OMBRELLO ROSSO for the same type of business. Because the translation of “Ombrello Rosso” from Italian to English is “Red Umbrella,” the marks will be considered identical and the Italian mark would be refused registration based on likelihood of consumer confusion.
Appropriating Famous Marks
As a general rule, you can’t claim another party’s mark as your own, even if you add additional words or display it within a visually distinct logo. For example, if you are an auto repair shop, beware including famous car company logos within your own design.
Confusing Similarity
What makes a proposed mark too similar to another one? If the new mark looks, sounds, or has too similar of a commercial impression compared to the registered mark, there will be a problem. If you mistake common sense for trademark law in regards to this issue, you're likely to be disappointed. Much of the interpretation around this issue is industry specific and driven by past decisions of the Trademark Trial and Appeal Board.
Surnames
A mark that appears to be a surname (a family name) can present an issue to being registered. The rationale is that anyone should be able to use their last name to promote a business and providing one person a nationwide, exclusive right to the name, would be unfair. However, there are a few things that can be done to get these types of marks registered, sometimes.
Geographic Places
Much like surnames, marks that contain names of geographic places can run into problems being registered. Also like a surname marks though, there are often arguments that can be presented to secure a registration.