Pick the Right Trademark

Posted on Thursday, February 21, 2019

When you create a brand name, the relative strength of the words you choose directly affects how well you will be able to protect the goodwill your brand builds.

Choose a unique trademark to protect your company. The more distinctive it is, the easier it will be to exclude similar trademarks from the marketplace.

When The Home Depot was getting off the ground in 1979, its founders searched for just the right name. They rejected choices like MB's Warehouse, Homeplace and Bad Bernie's Buildall in favor of the name that is now synonymous with home improvement.

How did they do it? An associate was driving past a restaurant made out of an old railroad car. She was looking for words that sounded good with "home" and the name The Home Depot was born (depot being a railroad station and also a place where large quantities of a commodities are stored).

Combining two words that are compatible with your product or service is one way to come up with a trademark. But keep in mind that not all trademarks can be protected under the law and registered with the U.S. Patent and Trademark Office.

A mark can be protected if it is sufficiently distinctive from another trademark that identifies a similar product or service. It can be a word, a symbol or a picture. Ordinary names receive little, if any, protection under trademark law and can't be federally registered.

The Strongest Categories Include:

Fanciful. These words are made up and have no purpose other than to identify a brand of goods or services. Examples are Clorox and Pepsi.

Arbitrary. These are real words, but used differently from their ordinary meaning. Examples are Apple (computers), Dial (soap) and Mercury (cars).

Suggestive. These are real words that suggest, but don't actually describe, qualities, characteristics or functions of the product or service. For example, the consumer has to use a little imagination to understand the meaning Greyhound Bus, Jaguar or Citibank. These marks don't always receive the broad rights that fanciful or arbitrary marks enjoy but they are usually entitled to federal registration. And their owners may be able to exclude identical or similar marks in the same or related markets.

The Weakest Category Is:

Descriptive. These simply describe the qualities, characteristics, functions or geographic origin of goods or services. For example, The TV Repair Store or the Twin City Cleaning Supply Company. The problem with these trademarks is they can only be protected if they show a secondary meaning.

Words that  Can't be Protected Are:

Generic words. You can't get trademark protection for words that are associated with goods or services but don't have any other identifying features, such as aspirin.

Searching for the right name for your products and services is not a simple task. Get legal help to ensure the name is properly registered after a search of existing trademarks has been completed.

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Disclaimer: The information contained in Dulin, Ward & DeWald’s blog is provided for general educational purposes only and should not be construed as financial or legal advice on any subject matter. Before taking any action based on this information, we strongly encourage you to consult competent legal, accounting or other professional advice about your specific situation. Questions on blog posts may be submitted to your DWD representative.