How to Choose A Trademark

By Anne Lipp

You are about to open your own, brand new business. Congratulations! But before you share your creations with the public, you know you need a catchy, clever name to identify your merchandise. You need a trademark. How do you go about choosing one? While it may be surprising to many, there are several considerations you need to think about if you want that ®.

Here are some general guidelines:

  • Don’t choose something generic. Don’t call your products “Donuts” if they are in fact donuts. This name doesn’t distinguish your products from all the other donuts out there. The point of a trademark is to identify the source of your goods or services as opposed to your competitors’.
  • Don’t choose something descriptive. I’m talking about adjectives like “Frosted” or “Colorful;” laudatory descriptors like “Delicious” or “Amazing;” geographic terms and nicknames like “Michigan,” “Motor City,” or “Mitten State.” No one person or company is allowed to claim these words for themselves as long as they describe the products they represent. You can use those words, of course. You just can’t trademark them.
  • Do choose a name that is suggestive, or better yet, completely arbitrary. These make the best, most memorable trademarks. These are marks using a word that has little to do with the actual products they represent. Using a suggestive or arbitrary mark allows the consumers to know they are purchasing your brand of donuts. Some suggestive and arbitrary marks we all know and love are Krispy Kreme and Dunkin’.
  • Do be careful about incorporating your own, individual given name. “Johnson’s Donuts” is straight forward and to the point. There is value in that. But the value is not in the trademark. At best, you end up with a descriptive mark. See #2, above. At worst, you end up in a trademark dispute with your brother who also makes donuts.

Yes, there are exceptions to all of these guidelines (for example, Tim Horton’s). That’s why we have our final word of guidance:

  • Do contact a trademark attorney. There is no substitute for a good trademark search performed by an attorney. There is also no substitute for an attorney’s advice on the implications of choosing any particular mark. A trademark can be one of the most valuable assets your successful company owns. Treat it as such.

Anne is an attorney at Lippitt O’Keefe Gornbein, PLLC whose practice focuses on intellectual property. To contact her, please visit her page at http://www.lippittokeefe.com/anne-cubera-lipp/

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