Avoiding Problems When Choosing a Trademark

When you start a business or new product line, you need to take care not to make an error in your choice of name, or how you protect that name, that might allow another business to stop your use of your chosenĀ  name or potentially start using the name you have chosen in competition with your enterprise.

The best way to protect your business name or brand is by registering a trademark that defines your exclusive rights to the name within specified areas of commerce.

Federal trademarks are registered through the United States Patent and Trademark Office (USPTO). You may search through trademark records through their website, to review trademarks registered by competing businesses, or to search for terms that are similar to the word trademark you hope to register.

Due Diligence in Trademark Selection

Whether you intend to trademark a logo, or get a word-based trademark, you should first check to see whether other businesses are using a similar trademark. If your proposed trademark is too similar to an existing mark, such that it might confuse consumers about the origin of your goods or services, you may find your mark rejected by the USPTO or challenged by the other business.

Similarity of Trademarks

The analysis of similarity takes place at two levels:

First, consider well-known trademarks and logos. If your proposed mark is similar to a famous mark, consider whether the USPTO might reject it on that basis alone, or if the holder of the well-known mark may try to stop you from using the mark after you have invested time and money in the promotion of your new mark.

Second, investigate your industry. Do businesses that offer goods or services in the same or in a similar category of goods or services use a similar mark? If so, are you certain that there are enough differences between your mark and theirs, that the mark won't be rejected by the USPTO or as the result of a subsequent challenge by the owner of the other mark?

When comparing your mark to those of competitors', keep in mind that not all trademarks are registered with the USPTO. You may find that your mark is in conflict with a competitor's mark, as established by state law. If you intend to provide goods or services in other nations, you must also consider any past or competing uses of the mark or similar marks in that nation under its laws.

Making a Poor Choice of Mark

Congratulations: you have performed your due diligence and have no reason to believe that your mark will be rejected by the USPTO based upon its similarity to other marks, and see no sign of any other trademark holder that might make such a claim. But before you file your application, consider whether there are other issues with your mark that might cause it to be rejected or that might justify considering a different trademark or logo.

Avoid Generic Terms

One common mistake that applicants make when choosing a trademark is to try to trademark a descriptive or generic term, or to try to get a trademark based upon a geographic name. When a proposed trademark merely describes the goods or services associated with the mark, such as "Natural Wood SmartPhone Cases", it is very likely that the application will be rejected or, if approved, that it will later be successfully challenged by a competitor.

Generic terms are words or phrases commonly associated with a product (e.g., copy paper, inkjet cartridges), and an application that tries to get trademark protection for a generic term is unlikely to be approval or to withstand a later challenge. Using a geographic term that is merely descriptive (e.g., Detroit Hamburgers) is not going to support a successful trademark application.

The easiest marks to register and defend are arbitrary or fanciful - "Google" to represent Internet searches, "Amazon" as an online retailer, and the like.

Avoid Hidden Meanings

When choosing your mark, pause for a moment and take a look at the name through fresh eyes - or get some friends to give you their honest impressions. You may be surprised by what you learn.

For example, somebody might perceive a religious or sacrilegious element to your trademark, as some did with the classic Proctor & Gamble man in the moon logo. You may learn that the name you've selected for your business has a very different meaning in other parts of the country or world, and end up having to re-brand your enterprise, as occurred with Biggby Coffee, originally called Beaner's Coffee, when it expanded into markets where "beaner" was used as a disparaging term against Hispanic Americans.

Although it's likely that if you, your designer, and others involved in the decision-making process don't see any secret symbols or hidden meanings in your mark, others will concur, recall that even large organizations have missed serious problems with their marks, and also that there are people who make it a hobby to identify and publicize "hidden meanings" and messages from trademarks and logos. Some people, for example, insist that there are three hidden sixes, the "mark of the Devil", in the Disney signature logo, or that the Sun Microsystems logo contains a hidden swastika.

Although in those latter two examples, the accusations have never gained any traction with the public, a bit of extra caution may save you from having to later undergo an expensive rebranding effort.

Protecting Your Mark

Once you have identified your mark, you need to take appropriate steps to protect it against use by your competitors. Domestically, that will mean registering your mark with the USPTO.

Registering Your Mark

If your mark is in actual use, you can apply for nationwide trademark protection with the USPTO. You will need to accurately describe the goods and services associated with your mark, using the USPTO classification system. On its face, the process of registering a mark is not particularly difficult, but getting the mark approved can be a bit frustrating.

You need to respond in a timely manner to Office Actions, which are notices from the USPTO that there is a problem with your application that will cause the application to be rejected or that must be addressed before the application can be approved. If you have the budget to do so and are having difficulty with your application or responding to office actions,, consider having a trademark lawyer assist you with your application.

Registering Intent to Use

Although you cannot register a trademark that is not yet in use, you do have the opportunity to register your intent to use the mark. While the period covered by an intent to use application is relatively short, should a competing claim arise, the filing will allow you to use your filing date as the date of constructive use of the mark for purposes of nationwide priority.

If you file intent to use, be certain to meet the deadlines for extending your application, and for filing your statement of use.

Copyright © 2015 Aaron Larson, All rights reserved. No portion of this article may be reproduced without the express written permission of the copyright holder. If you use a quotation, excerpt or paraphrase of this article, except as otherwise authorized in writing by the author of the article you must cite this article as a source for your work and include a link back to the original article from any online materials that incorporate or are derived from the content of this article.

This article was last reviewed or amended on May 8, 2018.