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Alexander Legal LLC What you need. What we know.â�¢ – Trademarks: Selection Matters
A prospective trademark client contacts an intellectual property law firm, excited that they have the best name for a service/good he is offering for sale. It is such a great name, he wants to be sure to "trademark it." As a trademark attorney, it is always nice to har that a prospective client is thinking about his trademark rights and building his trademark portfolio.
Too often, however, the trademark is weak. It's descriptive. Yes, it clearly communicates what service or good is or does, but it is bland, uninteresting, and safe. If the business is a start-up and doesn't have much goodwill or brand recognition to which to point, there is a certain mindset that descriptive will generate business. If the name/Mark is generic -- a common name for the service/good, it cannot be registered.
When considering the adoption of a Mark for your service/good:
- Be arbitrary! Where the connection between the Mark and the goods and/or services provided isn't clear, the trademark and the rights that accrue to it are actually stronger than for a descriptive Mark. If you can't be arbitrary, at least be clever enough to be suggestive rather than descriptive.
- Do your research! If a quick Google Search turns up 25,000 results, unless the majority of the results refer to *your* business (not likely), this volume is not necessarily a good thing.
- Similarity is a risk factor! If your Mark looks and sounds similar to another Mark already in use, in particular in the same industry (e.g., automotive), offering the same services (buying and selling cars), targeting the same customers (people buying cars), and advertising through the same outlets, or even just a combination of the foregoing, your Mark could be vulnerable. Trademark law abhors a likelihood of confusion. So, of course, never adopt or use a Mark with the intent to cause confusion.
- Consider hiring a trademark attorney to conduct a trademark clearance search for your Mark. Yes, it is an additional cost, but it can save you aggravation and additional expenses down the road. You could be infringing on someone else's pre-existing trademark rights.
Alexander Legal LLC What you need. What we know.â�¢ – Trademarks: Selection Matters