Trademark Selection Considerations

Trademark selectionTrademark Selection is an extremely important consideration for almost every business, inventor and entrepreneur. The nature and characteristics of the trademark you select will determine the level of trademark protection afforded to your trademark. When choosing a trademark, there are various considerations to make, including brand identity, the company, product or service name, as well as the strength of the brand and/or company as a trademark.  Below are a few items to consider when selecting a trademark.

Brand Identity & Strength of Trademark

One of the items you will want to consider when looking at selecting a trademark is the brand identity. Your brand identity will set you apart from the competition. You want to select a brand that is memorable and highly distinguishable from your competition, but you also want to make sure that the brand you choose is also able to be protected through trademark laws.  Your brand identifies the goods or services of your business and distinguishes those goods or services from others.  You will want to make sure that you can protect that brand from being used by others, thereby avoiding confusion in the marketplace.  The best way to protect your brand is through federal trademark protection.

When choosing your brand, consider the strength of the trademark. Individuals and businesses should aim for a trademark that is distinctive, rather than descriptive.  The proposed trademark should be highly distinctive and contain no descriptive, surname, or geographic words. Generally, the more unique or distinctive the trademark selected, the less trouble the trademark owners will endure during the trademark prosecution process. For a detailed discussion of the different levels distinction the USPTO considers when assessing the registrability of a trademark, see the strength of trademark page as well as the trademark selection checklist.

Company Name Selection

Another consideration to make when selecting a trademark is to consider your company’s name.  Corporate names are generally not protectable as a trademark.  However, if the name is used as a trademark, corporate names are allowed registration under the same principles as other trademarks. In order for registration, it must be determined that the trademark is not solely being used as a corporate name. See the company name checklist for a more detailed discussion of things to consider when selecting a company name for use as a trademark.

Conduct a Search Before You Finalize Your trademark Selection

Once you have a list of potential trademarks, it is important to conduct searches in the countries where you will be using the trademark to make sure it is available.  If you discover that a third party has already registered and/or used your trademark, it could save you from making a large investment on a trademark that won’t be protectable.  Our trademark attorneys are skilled at conducting such a search and assessing the results.